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Policing Trademarks and Confusing Burgers

Posted by: Karla Aspiras on July 25, 2012
McDonadld's & London 2012

The Olympics’ opening day is fast approaching and the brand police are more stringent than ever as brand owners linger and abound, wanting to partake of the massive potential of marketing during the Olympics. However, if the brand is unable to land a sponsorship contract with the committee, then the brand owners might resort to ambush marketing tactics.

One sponsor that has gained a lot of attention is McDonald's, because of the clause in its sponsorship contract for the Olympics that effectively prevents about 800 food retailers from selling chips within the Olympic Park. The Olympic committee has put measures in place to ensure that official Olympic sponsors have sufficient protection for their brands. But McDonald's monopoly on selling chips begs the question, how stringent can a brand owner be in policing its marks? Protection of a trademark is certainly a big benefit that an owner can monetize, but not to the point of abuse.

From a fast-food giant's perspective, it is logical to be aggressive in the protection of a brand that it has invested so much time and resources on. Your brand is one of your most valuable assets.

For a small business owner, it can be frustrating to be faced with a trademark infringement case when your intent was not to tread on someone else's brand. Rather, you fully believe that the brand that you have chosen for your goods and services represents you best without free loading on some other brand's recognition and goodwill.

McDonald’s is certainly no stranger to enforcing their trademark rights and policing any potential misuse of their marks. A movie that comes to mind is Coming to America, which depicts a fictional interaction and friction between McDonald’s, and a tiny neighborhood burger joint "McDowell's." The owner of McDowell’s, Cleo was hounded by McDonald's because of alleged infringement of the McDonald's mark. Cleo McDowell attempts to dispel any confusion and points out subtle differences:

"See, they're McDonald's...I'm McDowell's. They got the Golden Arches, mine is the Golden Arcs. They got the Big Mac, I got the Big Mick. We both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions, but their buns have sesame seeds. My buns have no seeds. "


This argument of course doesn't fly. It is worth remembering that trademark infringement is not merely a mechanical evaluation of factors that can cause brand owners to claim use of their brands by another without license or authorization. The standard remains uniform throughout: confusion; but there are nuances involved and it is not always a black and white situation as the character Cleo naively puts it.

Trademark law aims to protect consumers from being confused as to the source of a product or a service. But it also aims to protect brand owners from their investment into the development and protection of their brands. Ideally, these two are balanced, but "ideal" is not necessarily the real world.

This drives the point home: the choice of a name for goods and services is a precarious matter. Brand strategy is not merely a matter of avoiding trademark infringement suits. It is just one aspect of brand strategy that must be taken into consideration. An overall brand strategy also considers a brand that the target markets responds to, and a brand that can represent the company's mission on a long term basis.

Where do we then draw the line when brand protection treads the thin line between aggressive brand strategy and overzealous brand protection that borders on bullying?


Karla Aspiras is a Trademark Analyst at Interbrand NY.

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