Be Careful What You Argue

When Pat McDonagh started a chain of burger joints in Ireland, he called them SUPERMAC’S after the nickname he earned when he played soccer.

If you want a SUPERMAC’S burger and chips you have to go to Ireland because, so far, McDonald’s has argued that SUPERMAC’S is “confusingly similar” to BIG MAC to keep the chain from expanding.[1]

That might be changing. In April 2017 Supermac’s filed to cancel McDonald’s BIG MAC registration.[2]

McDonald’s submitted a variety of evidence[3] to show that it had been using BIG MAC but the three-judge panel of the Cancellation Division was not impressed[4] and concluded that “the documents [submitted by McDonald’s] do not provide conclusive information that the products marked with [BIG MAC] are offered for actual sale . . ..”[5]

The panel revoked McDonald’s BIG MAC trademark registration[6] and ordered McDonald’s to pay all the costs.[7]

When I read a story like this, I see McDonald’s shooting itself in the foot. Trademark owners need to protect their trademarks, but sometimes trademark owners overreach and find themselves trapped by their own unqualified argument that someone else’s trademark is confusingly similar to theirs.

McDonald’s can’t now argue that BIG MAC isn’t confusingly similar to SUPERMAC’S because McDonald’s is already on record in the opposition it filed saying that it is.

Supermac’s and McDonald’s will probably agree to each allow the other to use and register its trademark. That should have happened in 2014 but McDonald’s needed to have its nose bloodied before it would play nice.

 

Huge shout out to Rebecca M. for sending me an article that led to this post.

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Photo credit: Galway – Rosemary Ave – Supermac’s
© 
2012Joseph Mischyshyn cc-by-sa/2.0 – geograph.org.uk/p/3024899

[1] In March 2014 Supermac’s Holdings Ltd filed an application to register SUPERMAC’S for, among other things, hamburgers and restaurant services. McDonald’s International Property Company, Ltd opposed the application and won the opposition.

[2] McDonald’s was granted a registration for BIG MAC in the European Union in December 1998. In the European Union, a trademark registration can be cancelled if the owner can’t prove use in the five-year period before the cancellation request was filed.

[3] Here’s the description of the evidence that McDonald’s submitted:

  • 3 affidavits, signed by representatives of McDonald’s companies in Germany, France and the United Kingdom. They claimed significant sales figures in relation to ‘Big Mac’ sandwiches for the period between 2011 and 2016 and attach examples of the packaging of the sandwich (boxes), promotional brochures and what appear to be menus, further referred to below:
  • Brochures and printouts of advertising posters, in German, French and English, showing, inter alia, ‘Big Mac’ meat sandwiches; and packaging for sandwiches (boxes); the materials appear to originate from the EUTM proprietor and are dated between 2011 and 2016. The brochures and posters show a sandwich on the menu along with other products, or on its own, and the prices are also provided on some of the materials; other documents appear to be blank menus in which the price can be filled in. The EUTM appears on the submitted material in relation to sandwiches.
  • Printouts from the websites mcdonalds.de, mcdonalds.at, mcdonalds.be, mcdonalds.cz, mcdonalds.dk, mcdonalds.es, mcdonalds.fi, mcdonalds.fr, mcdonalds.hu, mcdonalds.ie, mcdonalds.it, mcdonalds.nl, mcdonalds.pl, mcdonalds.ro, mcdonalds.se, mcdonalds.si, mcdonalds.sk, mcdonalds.co.uk,
    dated between 07/01/2014 and 03/10/2016. They depict a variety of sandwiches, inter alia ‘Big Mac’ sandwiches, some of which state that they are sandwiches made with beef meat.
  • A printout from en.wikipedia.org, providing information on ‘Big Mac’ hamburger, its history, content and nutritional values in different countries.

Decision on Cancellation No. 14 788 C (Revocation), Supermac’s (Holdings) Ltd v. McDonald’s International Property Company, Ltd. (2019), p. 3.

[4] Here’s what the Decision on Cancellation said about each of the types of evidence:

The Affidavits

  • “As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.
  • “However, this does not mean that such statements do not have any probative value at all.
  • “The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging, etc.) or evidence originating from independent sources. In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the content of the affidavits is supported by the other items of evidence.”

Decision at p. 4.

The Websites

  • “Consequently, the presence of the trade mark on websites can show, inter alia, the nature of its use or the fact that products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.
  • “In particular, the value of the internet extracts in terms of evidence can be strengthened by evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period and in the relevant territory. For instance, useful evidence in this regard could be records that are generally kept when operating a business web page, for example, records relating to internet traffic and hits attained at various points in time or, in some cases, the countries from which the web page has been accessed. Neither of these, however, was provided by the EUTM proprietor.
  • “Although some of the printouts of the proprietor’s web pages exhibit sandwiches (the prices are not provided), some of which marked with the EUTM, it could not be concluded whether, or how, a purchase could be made or an order could be placed. Decision on Cancellation No 14 788 C page: 5 7 of Even if the websites provided such an option, there is no information of a single order being placed. Therefore, a connection between the EUTM proprietor’s websites (irrespective of the used country code top-level domains and languages) and the eventual number of items offered (sold) could not be established.”

Decision pp. 4-5.

The Brochures, Advertising, and Menus

“Indeed, although the submitted packaging materials and brochures depict the EUTM, there is no information provided about how these brochures were circulated, who they were offered to, and whether they have led to any potential or actual purchases. Moreover, there is no independent evidence submitted that could show how many of the products for which the packaging was used (if that is the case) were actually offered for sale or sold.”  Decision p. 5.

The Wikipedia Printout

“As far as the printout from en.wikipedia.org is concerned, it is noted that Wikipedia entries cannot be considered as a reliable source of information, as they can be amended by Wikipedia’s users and therefore these could only be considered relevant as far as they are supported by other pieces of independent concrete evidence.”  Decision at p. 5

[5] “Taking into account the submitted evidence as a whole, it is concluded that the documents do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations. Even if the goods were offered for sale, there is no data about how long the products were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.”  Decision at p. 5

[6] “It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.”  Decision at p. 6.

[7] Decision at p. 6.

Here’s a link to the decision.

 

Scam Scam Scam Scam

You know scammers are out of control when they start sending trademark scams to trademark attorneys.

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Everything about this notice screams “official”.  It has a UPC code.  It’s from the “Patent and Trademark Bureau.” It says: “Form approved: OMBE 328-0119/”.

Anyone opening this and reading it would assume that she needs to write a check to the Patent & Trademark Bureau for $890.

The fine print says the sender is “not endorsed by the U.S. government” and that this is an “optional offer,” while in the bold print near the top it says:

“Your trademark is about to expire. Renewal date 01-05-2019.”

This trademark registration is NOT due for renewal. In fact, it’s impossible to file a renewal for this registration until the 5th anniversary of the registration date. The actual due date for the renewal is the 6th anniversary of the registration date. That means you can first file the renewal on January 5, 2021 and it isn’t due until January 5, 2022.

Other scam notices I’ve seen actually lie about the registration date just in case you know about the 5-6 year rule.

Someone would be hard-pressed to spend even an hour doing this filing. $890 for one hour’s work is insane. The fee is too high even if I give this scammer the undeserved benefit of the doubt and assume that the quoted fee includes what the Trademark Office will charge.

Please please please don’t be taken in by these scammers.

 

Thanks to Julie W. for sending me the fake notice she received and suggesting this blog post.

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