Trademarks may reside in families. A family of marks is a group of trademarks that have a recognizable common characteristic. For example, you may recall that Eastman Kodak owned trademarks for KODACOLOR, KODAMATIC, and KODACHROME, the term “Koda” being the common element of all three trademarks. A family of marks is established when the purchasing public recognizes that the common characteristic indicates a common origin of the goods or services.
One of the most famous family of trademarks is that owned by the MacDonald’s Corporation (“McDonald’s”). So you have MCDONALD’S, EGG MCMUFFIN, CHICKEN MCNUGGETS, MCPIZZA, and the list goes on. Some courts have held that MacDonalds owns two families of marks, one for MAC and one for MC. Armed with its family of trademarks, McDonald’s has been a formidable litigation opponent, not afraid to wield its corporate weight against any company that dare uses MAC or MC in its trademark. That has been the case for many years until McDonalds met its match in the European Union.
In 1978, Pat McDonagh open his first Supermac’s franchise in Galway, Ireland, selling ice cream, chips, pizza and other tasty items. There are now 106 franchises in Ireland and Northern Ireland. True to form, McDonald’s served Supermac’s with a 41-page objection trouncing the franchise’s planned expansion into Europe. McDonald’s said Supermac’s would “take unfair advantage of the distinctive character and repute” of its family of trademarks. Supermac’s fought back by submitting a request to the European Union to cancel the use of BIG MAC. Tah dah!
Supermac’s claimed that McDonald was engaged in “trademark bullying; registering brand names… which are simply stored away in a war chest to use against future competitors.” In a Europe-wide judgment, the EU intellectual property office held that McDonald’s had not proven “genuine use of the Big Mac trademark as a restaurant name – or as a burger.” Pat McDonagh of Supermac’s is quoted as stating that “the judgment represents a victory for small businesses all over the world.”
McDonald’s, on the other hand, is quoted as saying:
We are disappointed in the EUIPO’s decision and believe this decision did not take into account the substantial evidence submitted by McDonald’s proving use of our BIG MAC mark throughout Europe,” a McDonald’s spokesperson said in an e-mailed statement to Euronews. “McDonald’s owns full and enforceable trademark rights for the mark “BIG MAC” throughout Europe.
The ruling does not prohibit MacDonald’s from continuing use of BIG MAC EU so the story is not likely over. Watch for an appeal.
Have a family of trademarks? Don’t get carried away, McDonald’s is still a powerhouse in the United States.
— Adam G. Garson, Esq.