Cite as 695 F.Supp. 198 (D.Md. 1988)
hood of confusion. The list, which was borrowed from Sun–Fun Products v. Suntan Research and Development, Inc., 656 F.2d 186, 189 (5th Cir.1981), directs inquiry into the following factors: (1) the strength or distinctiveness of the mark; (2) the similarity of the two marks; (3) the similarity of the goods or services which the marks identify; (4) the similarity of the facilities used by the parties in conducting their businesses; (5) the similarity of advertising used by the parties; (6) the defendant’s intent; and (7) actual confusion.
The Second Circuit has developed a similar list of some nine factors to consider, as follows: (1) the strength of the mark; (2) the similarity between the two marks; (3) the similarity of the products; (4) the likelihood that the prior owner will bridge the gap; (5) actual confusion; (6) the good faith of the junior user in adopting its mark; (7) the quality of the junior user’s product; (8) the sophistication of buyers; and (9) the relative harm to the parties if an injunction is granted. See Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961); Chandon Champagne Corp. v. San Marino Wine Corp., 335 F.2d 531 (2d Cir.1964); McDonald’s Corp. v. McBagel’s Inc., 649 F.Supp. 1268 (S.D.N.Y.1986).
These lists are not exhaustive or exclusive, and some of the factors may not always be relevant or equally emphasized in each case. However, they focus logically an inquiry that must be tailored to the factual circumstances of each case.
The circumstances of this case make for a specialized analysis. The offending mark has not been presented to the consuming public, except by way of announcement and trade shows. The product will not directly compete with any of the products of McDonald’s. And McDonald’s is not asserting a single mark but a family of marks.
The Court will therefore address in addition to the strength of the marks, which the Court has considered at length and determined to be especially important to any conclusion, the following: (1) the evidence of confusion; (2) the similarity of the contexts of uses of the marks such as the logo forms in which they are presented, the similarity of facilities on which they are used, the media forms in which they are used, and any other language or logos which might distinguish them or make them more similar; (3) the proximity of the markets for the products and services identified by the marks, and the likelihood that the gap between the markets will be bridged; and (4) the intent of the junior user in adopting his mark and his good faith in doing so.
Evidence of Confusion
With the announcement of McSleep Inn, the questions from the press and the industry as to whether Quality International would be infringing on the marks of McDonald’s were instantaneous. The message directed to Quality International by reporters and potential customers was “what will McDonald’s think?” The association was immediate and unambiguous.
When officers and employees of Quality International first became aware of the new product and name, they raised the same questions. Mr. Mosser, the franchising vice-president, was aware of the risk. Ms. Dynerman, the public relations director, expressed concern. The employees of Quality International verbalized their concern that the name sounds like McDonald’s. The concern was that even if McDonald’s was not affiliated with Quality International, perhaps a perception could reasonably be entertained that McDonald’s and Quality International were somehow together in the McSleep Inns venture so that McDonald’s reputation would be on the line.
It is true that mere association may not amount to confusion. It is one thing to say that a use brings McDonald’s to mind, but without confusion that McDonald’s is behind the product or service, and quite another to conclude that an appreciable number of typical consumers are likely to become actually confused. In the former case, there will be no trademark violation since trademark law does not pro-
