What You Can Learn from McDonald’s Trademark Loss
This guest blog post is written by Anna-Grace Nwosu, our soon to be departing to law school staff member! Anna-Grace has done an excellent job of showing why this story is important to every trademark owner. All legal conclusions, statements, or opinions have been vetted by Thomas Maddrey.
Did you know that McDonald’s has over 150 registered trademarks worldwide? When a company has such a broad trademark portfolio, losing just a single one doesn’t sound too disastrous — that is, unless it’s the trademark for your signature sandwich, the Big Mac.
Unfortunately for McDonald’s, that’s exactly what happened last week when they not only lost a trademark infringement case against a small Irish burger chain, but also lost the trademark rights to “Big Mac” across the entirety of the European Union. Let me emphasize that briefly: McDonald’s no longer has exclusive rights to the name of their signature sandwich across twenty-eight countries, including three of their top five revenue countries, meaning that any restaurant in the EU can use “Big Mac” on their menu with no legal repercussions. Burger King restaurants in Sweden have already started taking advantage of the loss by temporarily renaming some of their burgers with names like “The Burger Big Mac Wishes It Could Be.”
We’ve talked about trademarks vs. copyrights and registering for a trademark on many of our other channels, but this case teaches us the importance of making sure that a trademark stays in your possession once you’ve registered it. Here’s some information on how McDonald’s lost their mark and how you can make sure the same never happens to your business.
Enforcing Your Mark
Remember that once you’ve registered your trademark, it’s your job to enforce its usage. The U.S. Patent and Trademark office only registers your mark, they do not police it for you. If you see a different entity using your mark or something a little too similar to your mark, call your lawyer and let them know immediately! While a letter can’t solve all disputes, it can show evidence that you were diligent about protecting your mark.
Having kept a close eye on countless trademark infringement lawsuits internationally, we know that McDonald’s is great at the policing step. It’s the use that led them to losing the Big Mac.
Using Your Mark
Even though U.S. trademarks last ten years at a time, you need to prove that you are actually using the trademark both to renew it and if you should need to enforce it. This is where McDonald’s failed. The European Union Intellectual Property Office cited in their ruling that, above all else, McDonald’s failed to show genuine use of the term across the EU.
That may sound odd to us Americans since we always see a Big Mac on the menu, but keep in mind that McDonald’s menus are tailored to regional tastes and therefore the company may not have had the beloved Big Mac available for purchase in each location globally. Japan’s McDonald’s, for example, are known more for their shrimp burgers and green tea flavored desserts. There’s no mention of Big Macs anywhere on the menu.
McDonald’s couldn’t prove successfully that it had used the mark sufficiently, but you can make sure your mark stays safe by using it across all your businesses platforms and making sure it stays active. That means continuously selling products or services with the mark attached. If you don’t, the trademark office could cite “abandonment” and revoke your trademark rights.
Licensing Your Mark
McDonald’s is a franchise chain, which means that licensing its trademarks are a big part of their business. Should you also decide to license your mark to others, make sure you do so strategically. If your mark is floating around everywhere, it will lose its value as a unique identification of your brand or product and you’ll have a harder time proving that the mark is still protectable when you renew it.
There are a few other ways you could potentially lose your trademark; however, these instances are far rarer. From a legal standpoint, I find the generic argument rather interesting. Should your mark become incredibly well known you may lose the trademark because it has become too generic. This is the reason why no one can trademark words like “box” but also the reason why Johnson & Johnson’s trademark is for “Band-Aid Adhesive Bandages” and not just “Band-Aid”.
We know your trademarks are important for your business and we certainly don’t ever want to see you lose one. Should you ever need help in the registration process or with mark enforcement, we’re always happy to help!