In case you had not heard, McDonald’s lost its trademark registration for the “Big Mac” in the European Union (“EU”). See CNBC report here. This was big news and, as a result, industry competitors immediately sought to capitalize on McDonald’s legal misfortune. For example, within days, Burger King restaurants in Sweden began advertising their burgers by lampooning the lost “Big Mac” trademark. Some of the examples included:

• “Kind of Like a Big Mac, but Juicier and Tastier”
• “Big Mac-ish but Flame-Grilled Of Course.”
• “The Burger Big Mac Wished It Was”
• “Like a Big Mac but actually big”
• And more

See Washington Post story here. Trademarks and service marks are important components of the intellectual property of any successful business. McDonald’s lost trademark provides a few intellectual property lessons for San Diego businesses.

First, the case highlights the importance and value of trademark use and registration. Most businesses already know this, but here is a real-world example. One day your business has a legally protected trademark, the next the protection is gone and two week later, your competitors are using your trademarks to drive their sales. That is a double competitive loss; your sales are down because the trademark is lost and their sales are up. Normally, competitors like Burger King would not be allowed to reference a trademark like the “Big Mac” without risking a lawsuit. McDonald’s loss and Burger King’s reaction demonstrates the immense commercial value to trademark registration.

Equally as important, the legal defeat of McDonald’s opens the market to another competitor —  the winner of the trademark dispute, an Irish-based fast-food restaurant called Supermac. Supermac is now poised to begin opening restaurants elsewhere in the European Union. As can be seen, trademarks can provide very strong competitive advantages. If your business has trademarks or is seeking to register trademarks, you need the advice, counsel, and legal services of a great San Diego corporate attorney who has extensive experience with intellectual property.

A second lesson to be learned here is that trademarks must be used in commerce to be legally enforceable. This is the problem that McDonald’s could not overcome. If a trademark registration is challenged in the European Union, the holder of the registration must establish the four elements — location, timeframe, extent, and nature of use. McDonald’s did not meet its burden as the Big Mac is not a big seller or well-promoted in the EU. The EU Intellectual Property Office ruled that McDonald’s did not prove sufficient use and, for that reason, the EU trademark registration was canceled.

Here in the United States, trademark registration and protection also requires use in commerce (although “intent-to-use” registrations can be obtained under some circumstances). However, here, McDonald’s uses and promotes the “Big Mac” brand in a way that will not put the trademark at risk.

From this we can see a third lesson: There are many trademark regimes around the world. If your San Diego business is engaged in international commerce, you should be protecting your intellectual property in every jurisdiction in which you have sales.

Contact San Diego Corporate Law Today

If you need legal advice and services related to registering trademarks or your company’s other intellectual property, call business attorney Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard was named “best of the bar” four years running by the San Diego Business Journal. To schedule a consultation, email or call at (858) 483-9200. Like us on Facebook.

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