A Tale of Two Burger Battles: Trademark Lessons from McDonald's and Whataburger

In the realm of intellectual property, trademarks are a cornerstone for brand identity and protection. Recent legal skirmishes involving two well-known burger chains highlight critical aspects of trademark law and serve as instructive case studies for businesses of all sizes. The first case deals with a famous restaurant known all around the world as McDonald’s. McDonald’s is a HUGE restaurant chain, surely they must’ve won whatever legal battle they found themselves involved in, right? The second case involves a North Carolina favourite, What-A-Burger #13, which opened for business in 1969 by Marvin Bost Sr. and his wife Jane. The restaurant continues to be operated by Zeb Bost (son of Marvin and Jane). Let's delve into these juicy cases and uncover the lessons they hold.

McDonald's vs. Supermac's: The "Big Mac®" Trademark Loss

Background
Recently, the European Union General Court delivered a significant blow to McDonald's by revoking its "Big Mac®" trademark. This decision marked the end of a legal battle that began in 2015, when Supermac’s tried to register its name in the EU as a trademark for restaurants, with a view to moving into the rest of Europe, prompting McDonald’s to oppose the application by Supermac’s as a name and a logo. In 2017 the Irish fast-food chain Supermac's challenged McDonald's over the use of the "Big Mac®" in connection with among other things, restaurant names. Supermac's argued that McDonald's had not sufficiently used the trademark for various products beyond burgers within the past five years, thus failing to meet the EU's usage requirements in each of the classes they claimed in the registration.

The Ruling
The decision by the European court of justice (ECJ) ends a marathon nine-year legal fight by the Irish operator against its global rival. The EU General Court sided with Supermac's, stating that McDonald's failed to prove genuine use of the "Big Mac®" label for chicken sandwiches, poultry products, or restaurants. This decision paves the way for Supermac's to open outlets all across Europe. This ruling underscores the importance of maintaining proper documentation and use of trademarks across all claimed categories.

Teaching Moment: Specimens and Registration Maintenance/Renewals
A critical aspect of this case revolves around "specimens" and the need for ongoing registration maintenance. In trademark law, a specimen is a sample of how a trademark is actually used in commerce. Common types of specimens include labels, tags, packaging, and website screenshots showing the mark in use.
To maintain a trademark registration, especially in jurisdictions like the EU and the USPTO (United States Patent and Trademark Office), businesses must periodically submit specimens demonstrating the continuous use of the mark in commerce. Failure to provide adequate specimens can result in the cancellation of the trademark, as McDonald's experienced.

Key Takeaways:
1. Specimens: Ensure you provide clear, accurate samples of how your trademark is used in the marketplace. For example, if your trademark covers a range of products, you must show use across all those categories.
2. Maintenance/Renewals: Regularly review and update your trademark filings to ensure they reflect your current use and are backed by solid evidence.

Whataburger vs. What-A-Burger #13: A Battle Over Confusion and Rights

Background
Closer to home, a juicy legal battle is unfolding between Texas-based Whataburger and North Carolina's What-A-Burger #13. From what its currently known, Whataburger has filed a lawsuit yesterday, June 11, 2024, alleging that What-A-Burger #13 violated a confidential agreement reached in 2022. Aside from this confidential agreement, the crux of the dispute is the similarity in their trademarks and the potential for consumer confusion.

The Claims
The lawsuit highlights that Whataburger's trademark (U.S. Reg. No. 4845240, which was filed in March 24, 2015) claims a first use date back to 1950, while What-A-Burger #13's trademark (no trademark registration at the USPTO) was established in 1969. Whataburger argues that its brand has become distinct and recognizable even in areas where it currently does not operate, thus claiming strong common law rights on the mark. I would imagine that What-A-Burger #13 is claiming strong common law rights in its mark as well, since common law rights protect the geographic region in which you do business, even without a federal registration. However, the federal registration is typically a much sharper sword to battle with.

My Thoughts (not those of Tuggle Duggins)
If I had to guess, the confidential agreement reached in 2022, which I am presuming was signed early in 2022, may have limited the number of locations that What-A-Burger #13 could operate - which at the time the agreement was signed may have only been two. In 1969, the original brick and mortar opened in Mount Pleasant, NC and in 2015 a food truck was added to their business. I am not sure as to the exact date the second brick and mortar opened, but according web.archive.org, it was not until June 26, 2022, that their website advertised the second brick and mortar location. I believe this may have taken place after the confidential agreement was reached, causing Texas-based Whataburger to take legal action.
Doesn't matter what I think in the eyes of the judge, so we will have to wait and see how this develops!

Teaching Moment: Likelihood of Confusion Analysis
At the heart of this case is the "likelihood of confusion" standard, which is pivotal in trademark infringement cases. This analysis assesses whether consumers are likely to be misled about the source of goods or services due to similarities between two marks.

Key Factors in Likelihood of Confusion Analysis:
1. Similarity of Marks: Assessing the visual, phonetic, and conceptual likeness between the trademarks. In this case, "Whataburger" and "What-A-Burger" are phonetically identical and visually similar, increasing the risk of confusion.
2. Relatedness of Goods/Services: Even if the goods are not identical, they must be related enough that consumers might assume they come from the same source. For instance, if Whataburger were to sell chicken sandwiches and What-A-Burger #13 offered fried chicken, the similarity in branding could lead to confusion.
3. Priority and Senior vs. Junior Rights: Priority is crucial in trademark disputes. The first to use a mark in commerce generally has superior rights. Whataburger, having established its mark in 1950, claims seniority over What-A-Burger #13, which started in 1969.

Key Takeaways:
1. Likelihood of Confusion: Regularly assess your trademark to ensure it is distinct from others, especially those in related industries.
2. Priority: Understand and document the history of your trademark's use. Early and continuous use can solidify your claim to the mark.

Conclusion
These cases underscore the dynamic and sometimes precarious nature of trademark law. McDonald's loss of the "Big Mac®" trademark in connection with poultry, chicken sandwiches, and restaurants and the ongoing battle between Whataburger and What-A-Burger #13 offer valuable lessons in maintaining trademark rights and navigating legal challenges. For businesses, the key is vigilance: keep thorough records, ensure your trademarks are actively used across all claimed categories, and be prepared to defend your brand against potential infringement. As these stories unfold, they remind us that even in the world of burgers, the stakes can be extraordinarily high. Stay tuned for updates on the Whataburger case as the details sizzle out.

Reinier Smit is an intellectual property attorney with Tuggle Duggins P.A.  He can be reached at rsmit@tuggleduggins.com.

Further reading:

The Dangers of Self-Help Services in Intellectual Property Law

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