Big Mac Attack(ed): McDonald’s Loses on “Bullying” Claim
Even iconic brands and trademarks/trade names are subject to continuous scrutiny as well as litigation. Slathering a mark with “special sauce” and constant promotion does not always carry the day. The most recent example of long-promoted brands/marks not prevailing is McDonald’s (“McD”) and its “Big Mac” mark. McD recently lost before the European Union Intellectual Property Office (“EUIPO”) over a mark that was generally thought to be unassailable. McD may now have to consider renaming/rebranding – at least in Europe – its “Big Mac” along the lines of a similar catchy phrase/word combination, especially if it does not prevail on appeal of this initial EUIPO ruling.
Supermac, a small Irish fast food company, claimed that McD’s application for trademark registration for “Big Mac” was nothing more than trademark “bullying” by a giant international company. Supermac also claimed that McD was merely “storing” numerous trademarks such as “Big Mac” and not actively or sufficiently using such marks in commerce.
EUIPO, after reviewing the record, ruled that McD’s did not provide sufficient evidence or conclusive information to establish “genuine use of the trademark for Big Mac throughout the European Union.” Nor did McD’s prove to EUIPO’s satisfaction that McD had sufficient actual sales or commercial transactions either on-line or through retail stores.
While McD has indicated it will appeal this initial EUIPO decision, not only Supermac, but Burger King (“BK”) are taking advantage of this initial trademark loss and piling on. Several publications, including The Washington Post, have reported on BK’s just-launched snarky advertising campaign to take advantage of rival McD’s “Big Mac” trademark loss. BK’s latest advertising campaign pokes fun at McD’s with such bon mots to describe BK’s own “Whopper” as “Like a Big Mac, But Actually Big,” “The Burger Big Mac Wished It Was,” and “The Anything But a Big Mac.” These negative advertising/branding phrases will probably drift away over time, but will have McD cringing and feeling like BK is rubbing proverbial salt in an open wound.
Like any large multi-national company, McD (with over $22 Billion in world-wide revenue in 2017), has had its fair share of trademark and trade name/branding disputes over the years. Examples include: MacJoy; McCoffee; McMunchies; McCurry; McBrat; McChina Wok Away; McMunchies; McSleep; McMatch; and even a lengthy court case dubbed “McLibel.” Most of these trademark/trade name infringement cases have been won by McD.
This latest McD case is somewhat reminiscent of Wendy’s multi-year, albeit unsuccessful, attempt to franchise “Wendy’s” in Europe (commented on in Pellegrin’s BriefCase Vol. III, Issue #1 (January 2019)). Other U.S. manufacturers have lost their respective rights to claim exclusive TM rights to such marks as “Refrigerator,” Xerox,” “Linoleum,” and “Formica,” simply because such marks have become common household/business “words” or expressions in the lexicon over their decades of continued use in commerce, even with the ® clearly placed next to each mark.
TAKE-AWAYS/LESSONS LEARNED: It is critical for any company trying to enforce its trademark/trade name rights to place the marks and names into commerce as soon as possible. They also need to have readily available documented proof of actual, significant and not just one-time or a few purchases of goods/services under the marks themselves. Would-be infringers should be immediately challenged upon the superior in time/use owner’s discovery of apparent infringement/unauthorized/unlicensed use of the superior owner’s mark. Again, the basic universal test for TM/SM infringement is, “Will the average purchaser/member of the public be confused as to the source of the goods/services that the TM/SM covers by the alleged infringer’s palming off or unauthorized use of the mark?”
DISCLAIMER: The author does not represent any parties in this or any similarly related current trademark disputes.
Pellegrin’s BriefCase SM/©
Volume 3, Issue #2, February 2019
Author’s Background: ADVERTISING MATERIAL. John Pellegrin, Esq. maintains a robust business law and management consulting practice. Areas of expertise include IP/IT, transactional and business succession planning, communications, various government agencies (FCC, FTC, USPTO, Copyright Office, FDA, and EPA), nonprofits, and wills/trusts/estates. He is admitted to practice before the U.S. Supreme Court, New York, District of Columbia, and Virginia.
Caveats: Nothing contained in Pellegrin’s BriefCase should be taken as the last word on any given subject discussed nor relied upon as legal advice. Rather, the author’s comments on emerging trends and prescient decisions in the law and government regulations/interpretations/policies are meant to make the reader more aware of developing issues, opportunities and risks.
Legal and Business Consulting Services. We view our role as counsel being essentially to “define the scope of the risk” for our clients. John also serves as Of Counsel to the law firm of Allred, Bacon, Halfhill & Young, PLC, as well as being actively involved in several community-based organizations. These include serving as Chairman/At Large Commissioner on the Fairfax County Small Business Commission; Rotary Club of West Springfield; COR (Chartering Organization Representative) to a local Boy Scout Troop & Cub Pack; National Eagle Scout Association; IFSR; MVLE, Inc.; various Chambers of Commerce; MEPC (McLean Estate Planning Council), and the Purveyors Club. He has been recognized and honored with several awards over his lengthy legal career and for his community involvement, including a communications Golden Receiver Award, Community Champion Award, and Distinguished Service Award (Rotary International).
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