A trademark is a word, name, device, symbol or even a combination of these used to identify one’s goods, the source of the goods, and to distinguish such goods from those of another manufacturer or seller.
When one typically thinks of famous trademarks, they might recall Apple Incorporated’s “Apple” logo or the propeller spinning against a blue sky attributable to BMW. These are symbols or icons that we associate with particular products and the qualities that they possess. We all have a basic understanding of what a trademark is; we know one when we see one, but do we know what it takes to infringe on another’s trademark?
As I learned more and more about trademark law through my studies, my mind would always go back to the 1988 John Landis film Coming to America starring Eddie Murphy, a movie that somehow, the American Film Institute continually leaves off its list of top 100 movies of all time. Coming to America not only gave us ‘Soul Glow’ and a lasting image of the never-aging Samuel L. Jackson as the “hold up man,” but also, the fictional McDowell’s/McDonald’s feud which seemed to run throughout the movie. In the film McDonald’s saw McDowell’s as a competing restaurant that was attempting to capitalize on its established brand.
So was Mr. Cleo McDowell, owner and proprietor of McDowell’s, guilty of infringement?
In order to be considered an infringement on another’s trademark, that trademark must reproduce or imitate an already registered trademark or is likely to cause confusion, mistake or deception with regards to another trademark.
The key words in determining the answer to such a question are: “likely to cause confusion.” Upon looking at the restaurants’ logos (pictured below) the answer is obvious. It would be reasonable to assume that any potential customer glancing at the signs would be confused or would mistake one restaurant for the other.
In this case Mr. McDowell’s defense was: “They got the Golden Arches, mine the Golden Arcs.” Technically, yes, that is different, but to any customer the difference is negligible and would not lessen any customer confusion. Another problem that McDowell’s has is that it sells the same exact fast food as McDonald’s.
It is safe to say that McDowell’s competitor to the Big Mac would cause customer confusion even though Cleo claims, “…they use a sesame seed bun. My buns have no seeds.”
In order to actually recover profits or damages in a civil suit, McDonald’s would have to show that such imitation and deception were committed intentionally. One really does not have to look further for proof of intent than the scene in which McDowell is seen secretively reading a McDonald’s Operation Manual in his office. Cleo McDowell needs to prepare for possible litigation against a fortune 500 company.
So, whether you are Jackson Heights’ own Mr. Randy Watson or King Jaffe Joffer and aren’t sure if your Big Mic will be confused for a Big Mac, contact Kevin Maragh at 410-528-7205 to set up an appointment to discuss your potential trademark.