What is a Trademark Family?
We are all familiar with the multi-national, mega fast food chain that is McDonald’s and its ever increasing list of “Mc” foods. At some point, most Americans, although some are reluctant to admit it, have purchased McNuggets or a McCafe, both trademarked names. McDonald’s is hoping to add another term to its trademark family: McBrunch.
The History of McBrunch
The first time that the word McBrunch was ever heard of and used by McDonald’s was in 2001 when McDonald’s applied to trademark the name. However, the application for the trademark name never got very far as it was later abandoned and the word McBrunch was never publicly used by McDonald’s in its advertisements or on its menu. However, almost fourteen years later, McDonald’s is again venturing out to try to use the phrase McBrunch.
Trademark law refers the type of branding that McDonald’s is using as a “Trademark Family.” A trademark family is defined as “commonly owned trademarks that share a prefix, suffix, word, syllable or other feature that identifies each mark as being a member of the family.” One of the main ways in which to receive trademark family status is through advertising.
In other words, trademark law rewards companies that advertise their family of trademarks in such a way that the public will recognize the family of marks as identifying a specific product or service of a specific company. Once the family of trademarks has been established, trademark law then prevents others from using the surname mark for related goods or services.
McDonald’s v McBagels
One of the landmark cases establishing the strength of a family marks was another case involving McDonald’s, McDonald’s Corp v. McBagels, Inc., 649 F. Supp. 1268, 1 U.S.P.Q.2d 1761 (S.D.N.Y. 1986). In this case, the court preliminarily enjoined (i.e. prevented) McBagels, Inc. from using the word “McBagels” in connection with their baked goods sold at their bagel bakery and restaurant. McDonald’s argued that the use of “Mc” in front of the generic word bagels would confuse consumers, and that some consumers might actually think that McBagels was a store owned by McDonald’s.
Ultimately, McDonald’s prevailed on its argument that it owned the family of trademarks that used the formatives or surnames “Mc” or “MAC.” McDonald’s relied on examples of their food items such as “Egg McMuffin,” “McChicken,” “Big Mac,” and “Mac Fries.” It also presented evidence of its international advertising that was devoted to creating a recognition of the trademark McDonald’s and the “Mc” family name. As a result, the court had “no hesitation” in finding that McDonald’s was the owner of the family trademark surname that started with “Mc” and prohibited McBagels from using the surname in relation to food items.
What this Means for McBrunch
Overall, it will be easy for McDonald’s to claim a trademark for McBrunch as they are the sole owner of the “Mc” family name. They will most likely be filing an “intent to use” trademark application so that in the future they will be able to use the trademark name without any problems. The real question, though, is whether or not consumers will soon be able to buy brunch type items at McDonald’s’ chain stores.
Protect Your Trademark or Trademark Family
If you would like more information regarding trademark family names or any cases regarding protection of family trademark names please contact the lawyers at Whitcomb Law, P.C.