March 13, 2019 Practice Points

Want Fries with That Trademark?

Two recent developments involving fast-food giants provide important lessons in trademark prosecution and management.

By Tommy Tobin and Jeannie Heffernan

What can we learn about trademarks from hamburgers? Two recent developments provide important lessons in trademark prosecution and management. In January 2019, the USPTO granted approval to trademark the shape of a frozen hamburger. Across the pond, the EUIPO granted a competitor’s challenge to McDonald’s “Big Mac” trademark and revoked the mark. This post describes these developments and key takeaways for trademark owners and practitioners.

This Burger Cuts the Mustard

Although it may come as a surprise, food shapes are eligible for trademark protection. Just as with any product configuration, food shapes must have acquired distinctiveness and be non-functional. Hershey’s Kisses (Trademark #2138566), General Mills’ Bugles (Trademark #1929420), and Tootsie Roll’s Tootsie Pops (Trademark #1459412) have all passed the test.

On January 7, 2019, the USPTO approved the shape of a “Bubba Burger” (Trademark Application #87815098) for publication on the Principal Register. Whereas many burgers are round or even square, Bubba Foods LLC’s uncooked “Bubba Burger” has an irregular shape full of perforations. The mark was published for opposition on February 19, 2019. Absent any opposition, a certificate of registration will issue for this three-dimensional mark.

Before its mark was approved, Bubba Foods had to demonstrate to the USPTO that its perforated patty shape was not functional. In response to an Office Action, Bubba Foods pointed to millions in sales and advertising to support its claims for acquired distinctiveness, and submitted declarations detailing how the unique shape of the burgers not only lacks functionality in terms of taste or texture but also adds to the costs of their manufacture. Importantly, Bubba Foods provided evidence to support its claims. The examiner ultimately found the mark entitled to registration.

A Burger Battle Royale

The United States is not the only where place burgers are popular. Although most Americans know the Big Mac, most might not know the Mighty Mac, the burger served in Ireland by Supermac’s, an Irish chain that recently went toe to toe with McDonald’s over the BIG MAC mark and won.

This is not the first time McDonald’s and Supermac’s have squared off. As reported in the New York Times, prior EUIPO decisions had supported McDonald’s use of the BIG MAC mark, which essentially prevented Supermac’s expansion beyond Ireland. That changed on January 11, 2019, when the EUIPO granted Supermac’s challenge and revoked the BIG MAC mark based on non-use.

Per the EUIPO decision, McDonald’s bore the burden as the holder of a challenged trademark of either proving genuine use within the EU over the preceding five years or demonstrating proper reasons for non-use. To show genuine use of “BIG MAC” in the European Union, McDonald’s submitted three affidavits from company representatives, as well as brochures and packaging, company website printouts, and a printout from Wikipedia. Nevertheless, the EUIPO found the evidence “insufficient” to support a finding of genuine use. Specifically, the EUIPO found that the affidavits attesting to sales and marketing were self-serving and therefore carried less weight than information from independent sources. It also noted that the affidavits lacked supporting documentation from third-party sources regarding reported sales figures. Similarly, the EUIPO found that the company-generated advertising materials and website printouts  failed to provide “conclusive information” that the “BIG MAC” marked products were actually offered for sale and sold. In short, the EUIPO concluded that McDonald’s had provided “no confirmation of any commercial transactions, either online, or via brick-and-mortar operations” during the relevant time period. The EUIPO defended its decision as follows: “The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that [McDonald’s] chose to restrict the evidence submitted.” McDonald’s has two months from the cancellation date to file an appeal.

Food for Thought

The key takeaway from both these cases is that attention paid to documentation of trademark use in the ordinary course can pay big dividends later on if a mark owner is ever called upon to support the existence of its mark.  Consistent record-keeping and reporting of use in the marketplace, especially from third-party sources, could assist in the registration and protection of valuable trademarks. While burgers might not be brain food, the recent developments profiled here provide trademark owners and practitioners much to chew on.

Tommy Tobin is an associate with Kirkland & Ellis in Washington, D.C. Jeannie Heffernan is a partner with Kirkland & Ellis in New York City, New York.

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