Cite as 695 F.Supp. 198 (D.Md. 1988)
trademark register, the Court received into evidence as relevant only those marks on which there was evidence of actual use in the marketplace. These uses were evidenced by telephone directories, visual observations, credit reports, newspaper references, and telephone calls to the businesses.
The evidence established that there are many third-party uses. McHappy and McDonuts are used for baked goods and doughnuts in Ohio and the midwest area. McMaid is used for maid service franchising in various midwestern states. McDivots is used for golf accessories in the Colorado area. McFranchise is used for management consulting in the northeast. McMoose is used in Heritage Park on the east coast. McWest is used for contracting. McSports is used for a sports store in a strip shopping center. McPrint is used for franchised printing in the New York area. McQuick is used for quick change lubrications in the midwest area, mostly Indiana. McBud is a florist in the midwest.
Prior to 1984, McCrory’s used McBurger, McCheddar, and McCheese for various hamburger sandwiches. These uses were phased out pursuant to an agreement with McDonald’s, and McCrory’s retained only Captain Mac’s restaurant. Likewise, McAuto is used for computer data by McDonnell Douglas, but it, too, is being phased out. McJeans has been used to label wholesale jeans, but not at retail. McDuck is used in connection with greeting cards in a small business which has $3,000 in advertising per year. McTavern is used to name a lounge and deli in Indiana. There were other uses, but most of them are not significant in terms of market, product, advertising, or public awareness. Still other names use the prefix “Mac,” instead of “Mc.” While McDonald’s has the well-known marks “Big Mac” and “Mac Attack,” no formulated mark using a prefix “Mac” plus a generic word was brought to the Court’s attention.
There are four of these third-party uses which the Court considers significant: McQuick for franchised oil change operations in the midwest, McPrint for franchised printing shops in the New York area, McHappy for baked goods in the midwest, and McMaid for the franchising of maid service in the Chicago area. In these instances, the uses were franchised for use at multiple locations, and they must be considered when examining the strength and enforceability of McDonald’s marks in this case.
While McDonald’s elected not to present evidence on its policing activities, contending perhaps correctly in this case that the issue is not whether they enforce marks against others, but rather whether objectively there are third-party uses that dilute the strength of their marks, evidence did come in peripherally suggesting action being taken by McDonald’s against firms using McHappy, McTravel, McDivots, McQuick, McMaid, McPrint, and others.
Permitting the use by third parties of infringing marks can be relevant to three specific issues in a trademark case. If a trademark owner has expressly or impliedly given an assurance to another user that he will not assert his trademark rights, he may be barred from enforcing his mark against that user, by reason of estoppel by acquiescence. Sweetheart Plastics, Inc. v. Detroit Forming, Inc., 743 F.2d 1039 (4th Cir.1984).
Acquiescence may be inferred from conduct as well. Thus, delay in enforcement of a mark against a defendant may become relevant to the question of estoppel by acquiescence. Carl Zeiss Stiftung v. V.E.B. Carl Zeiss Jena, 433 F.2d 686 (2d Cir.1970), cert. denied, 403 U.S. 905, 91 S.Ct. 2205, 29 L.Ed.2d 680 (1971); Ambrosia Chocolate Co. v. Ambrosia Cake Bakery, 165 F.2d 693 (4th Cir.1947), cert. denied, 333 U.S. 882, 68 S.Ct. 914, 92 L.Ed. 1157 (1948). Whether a trademark owner delayed in enforcing its trademark rights against others, however, is not relevant to establishing an estoppel defense, since estoppel by acquiescence focuses on a plaintiff’s acts toward the defendant, not toward others. Acquiescence is a personal defense that merely results in a loss of rights against the defendant. Sweetheart Plastics, 743 F.2d at 1046.
