Trademark Attorney Morris Turek

Morris E. Turek

(314) 749-4059

morris@yourtrademarkattorney.com

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Monthly Archives: November 2009

“Who’s Your Patty?” Well, I’m So Glad You Asked…

Just recently, I read about a trademark dispute between two restaurants known for their hamburgers.  One has served billions and billions.  The other one has served…a lawsuit.

Lion’s Tap is a small local restaurant located in Eden Prairie, Minnesota.  According to its website, it has been rated as having some of the best hamburgers in the Twin Cities area and has been recognized as one of the top restaurants in the United States.  According to the federal trademark application Lion’s Tap recently filed, it has been using the trademark WHO’S YOUR PATTY? in connection with the advertising of its restaurant services since 2005.  You can see an example of its use of the trademark on the homepage of its website.

In the middle of 2009, McDonald’s began using the identical trademark WHO’S YOUR PATTY? in connection with the advertising of its new Angus Third Pound burgers (which, by the way, are heavenly).  According to reports, Lion’s Tap learned of McDonald’s use of the trademark on a billboard not too far from its own restaurant.  In August 2009, Lion’s Tap sued McDonald’s for trademark infringement and quickly applied to register WHO’S YOUR PATTY? with both the United States Patent and Trademark Office and the State of Minnesota.  Just a couple of weeks ago, the parties reportedly reached a “mutually beneficial amicable resolution” to the matter, but the specific terms of the settlement were not disclosed.  I hope that at least part of the settlement was free Big Macs for life.

You know, it’s easy for people to hear a story like this and think of McDonald’s as the big, bad corporate giant that just doesn’t care about small businesses like the Lion’s Tap and that enjoys infringing upon the trademark rights of others.  And it’s easy for people to feel sympathetic towards an establishment like Lion’s Tap that probably doesn’t have unlimited resources to litigate a federal trademark infringement lawsuit against McDonald’s.  But, in this case, I would bet a Super-Sized Extra Value Meal that McDonald’s, a sophisticated and wealthy company with access to dozens of attorneys, did their due diligence and conducted, at a minimum, a comprehensive federal and state trademark registration search prior to adopting and using WHO’S YOUR PATTY?.  Of course, such a search would not have revealed any trademark applications or registrations for WHO’S YOUR PATTY? owned by Lion’s Tap because Lion’s Tap did not file its federal and state applications until after McDonald’s already started using the trademark.  Furthermore, I would bet a Happy Meal (including the toy) that McDonald’s also performed a common law trademark search, which may or may not have uncovered the use of WHO’S YOUR PATTY? by Lion’s Tap depending upon the extent to which Lion’s Tap promoted the trademark since its adoption.

I think everyone can see that this whole situation could have been avoided had Lion’s Tap simply applied to register its WHO’S YOUR PATTY? trademark back in 2005 when it started using it in connection with its restaurant services.  Unquestionably, such a registration would have been uncovered by McDonald’s in the course of its trademark clearance searches and McDonald’s would likely have chosen not to adopt the identical mark.  But, instead, both parties had to spend time and money resolving an issue that should have never been an issue in the first place.  In fact, if McDonald’s really wanted to, it could have dragged this litigation out for years and put a significant financial hurt on Lion’s Tap.

The point is that even small businesses like Lion’s Tap have a responsibility to put others on notice of their trademark rights, and the easiest way to accomplish that is to register their valuable trademarks with the Trademark Office.  The cost of registering a trademark is nothing compared to the tens of thousands of dollars small businesses will spend engaging in a contentious trademark dispute.  And, trust me, Lion’s Tap wasn’t “lovin’ it” when it had to pay its attorneys’ fees.