Not Clowning Around

One of my favorite ‘80s movies is ‘Coming to America.’ The film stars Eddie Murphy as Akeem, Prince of the prosperous African kingdom of Zamunda. Instead of going through with his arranged marriage, he elects to travel to Queens, New York, to fall in love and marry someone of his choosing.

To prevent women from marrying him for his money, he hides his royal heritage. To help with his ruse, he gets a job at a local fast-food restaurant named McDowell’s, which strongly resembles another famous chain.

When asked about the similarities, owner Cleo McDowell, played by John Amos, explained, “Look, me and the McDonald’s people got this little misunderstanding. See, they’re McDonald’s, I’m McDowell’s.” He continued, “They got the Golden Arches, mine is the Golden Arcs. They got the Big Mac, I got the Big Mick. We both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions, but their buns have sesame seeds. My buns have no seeds.”

Had this been real life, it’s certain McDonald’s would have taken Cleo to court for trademark infringement, as the chain is fiercely protective of its intellectual property, especially for its flagship burger.

The Big Mac was created by Jim Delligatti, a franchisee who operated several McDonald’s restaurants in the Pittsburgh area. He claims he simply copied the double deck hamburger marketed by Big Boy restaurants. The first one was sold on April 22, 1967. Its extreme popularity led to the burger being added to the menu of all U.S. McDonald’s restaurants in 1968, and eventually all McDonald’s globally.

So, when Irish fast-food rival Supermac applied to register its company name in the European Union, McDonald’s objected, claiming consumers would confuse it with its already trademarked Big Mac name. Like McDowell’s, Supermac offers a sandwich with the same ingredients as a Big Mac, but it’s called the Mighty Mac.

In response, in 2017, Supermac filed a request with the EU’s Intellectual Property Office to revoke McDonald’s Big Mac trademark registration. The chain asserted McDonald’s couldn’t prove that it had used the name for certain categories that aren’t specifically related to the burger over five years. That’s the window of time in Europe that a trademark must be used before it can be revoked.

Supermac’s request was approved, so McDonald’s appealed to the EU court. The court upheld the decision to revoke the trademark, saying, “McDonald’s has not proved that the contested mark has been put to genuine use” in connection with chicken sandwiches, food made from poultry products or operating restaurants and drive-throughs and preparing take-out food.

Supermac’s Managing Director Pat McDonagh relished the victory, stating, “This is a significant ruling that takes a common-sense approach to the use of trademarks by large multi-nationals. It represents a significant victory for small businesses throughout the world.” McDonagh further accused the burger juggernaut of “trademark bullying to stifle competition.”

With the trademark lifted, Supermac will now almost certainly expand into other EU countries.

McDonald’s released a statement in response to the decision, saying, “The decision by the EU General Court does not affect our right to use the ‘BIG MAC’ trademark. Our iconic Big Mac is loved by customers all across Europe, and we’re excited to continue to proudly serve local communities, as we have done for decades.”

It’s a little-known fact that Barry Manilow wrote McDonald’s jingle, “You Deserve a Break Today.” The chain does have the option to appeal the decision to the European Court of Justice, the bloc’s highest court. That is, if they’re ready to take a chance again.

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Reg P. Wydeven

Elder Law and Estate Planning Attorney at McCarty Law LLP
Hoping to follow in his father’s footsteps from a young age, Reg’s practice primarily consists of advising individuals on estate planning, estate settlement and elder law matters. As Reg represents clients in matters like guardianship proceedings and long-term care admissions, he feels grateful to be able to offer families thorough legal help in their time of need.

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