McDonald’s acting to protect its intellectual property is nothing new, said three trademark lawyers interviewed by Ad Age, noting that the burger giant regularly disputes trademark applications that could confuse consumers with the brand and its “Mc” family of trademarks such as McCafe. , McDelivery and McChicken.
The McHemp case is slightly more unusual, they said, because McDonald’s is not claiming that consumers would think McHemp is associated with McDonald’s, but they would know it obviously isn’t: the use by McHemp’s “Mc” prefix in his name to promote products that McDonald’s does not sell is a joke at the expense of Golden Arches.
“They say, ‘If we let you sacrifice our famous brand, you’re going to blur our brand and tarnish our brand because you’re associated with something that we don’t want to be associated with, even though people know McHemp isn’t from McDonalds,” explained Dahlia Saper, trademark attorney at Saper Law.
A representative for McHemp was unavailable for comment. The company appears to operate a single store in Whitsett, North Carolina, as well as an online store, although its website has a non-functional link to franchise information. The company, identified in the documents as McClendon Enterprises, filed for federal protection with the U.S. Patent and Trademark Office in November, seeking to register its name to the trademark “retail store services offering CBD and hemp products”.
McDonald’s filed its objection on May 3, during the 30-day period that McHemp’s application is considered “released for objection.” The USPTO Trademark Trial and Appeals Board (TTAB) would decide whether to grant or deny the application after reviewing these opposition briefs, if it progresses that far.
McDonald’s did not immediately respond to a request for comment.
Trademark attorneys said they were almost certain McDonald’s opposition would be enough to prevent McHemp from gaining approval for a host of reasons, including McDonald’s long history and multiple brand names – 13 in all – with proven distinction and millions invested in developing and protecting their customer base. . There is also the question of the ability to wage a legal war against the giant corporation, should it happen.
“I represent a lot of small clients — not the McDonald’s of the world — and I can say that it’s very expensive to defend against a large corporation,” said Josh Gerben, trademark attorney and founder of Gerben Intellectual Property. If McHemp and McDonald’s faced off in court, he said, “they would be looking at at least $50,000 to $100,000,” Gerben noted.
It is therefore likely that McHemp would drop the trademark lawsuit, although the attorneys Ad Age spoke to about the case cautioned that they could not speak with absolute certainty (none of the attorneys represent either McDonald’s or McHemp). ). The nature of McDonald’s opposition makes it unlikely that the parties will reach a settlement that could allow limited use of the brand, said Linda Goldstein, co-chair of the advertising, marketing and digital media practice at BakerHostetler.
“Very often when you have this type of proceeding before the TTAB, companies will settle, and sometimes the parties will agree to a limited exclusion where the party agrees to limited use of their mark,” Goldstein said. “I can’t predict what would ultimately happen, but it’s not about confusion, it’s about what McDonald’s would perceive as brand damage. It’s not the kind of dispute where the definition narrow authorized use for McHemp will achieve McDonald’s objectives.
And if McHemp won his trademark claim, that wouldn’t necessarily preclude McDonald’s from pursuing a separate lawsuit, Goldstein said.
McDonald’s has a long history of protecting its name – and the “Mc” prefix – from businesses around the world, including reports intellectual property tangles with a Filipino restaurant called McJoy; a San Francisco cafe called McCoffee (run by a woman named Elizabeth McCaughey); and a Scottish restaurant called McMunchies.
“They have this belief, correct or incorrect, that ‘Mc’ is a famous identifier for their brand and therefore they should stop people from registering brands that use Mc. And they throw a lot of challenges,” Gerben said. “We’re seeing a lot of similar activity with Monster Energy around companies looking to trademark the ‘Monster’ word.”
Whether McHemp can overcome huge odds remains to be seen; but an informal poll conducted on Twitter by Gerben would indicate that his supporters have their backs. When asked if McDonald’s “should be able to prevent other non-food related companies from using the ‘Mc’ prefix?” 78.6% chose “McPlease” against only 21.4% who said “there is only one “Mc”.
Jon Springer writes for Crain’s sister publication, Ad Age.