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Dispute over "Who's your Patty?" Underscores the Benefits of Registering Trademarks
December 11, 2009 by Molly Eichten In October 2009, a single-location restaurant named "Lion's Tap" based in Eden Prairie, Minnesota, sued McDonald's for trademark infringement for use of the tagline "Who's Your Patty?" in connection with McDonald's new Angus burger. Lion's Tap claimed to have been using the tagline in connection with its restaurant since 2005 (and did not apply for a federal trademark registration until 10 days before filing the lawsuit). So how is it that a single-location restaurant can confidently file a lawsuit against one of the world's largest restaurant franchisors? The short answer: because Lion's Tap used the trademark in Minnesota long before McDonald's. Trademarks are any word, phrase, symbol, logo or design (also sound, color, smell, or product configuration) used to identify particular products or services and to distinguish those products and services from competitors. Trademark rights allow an owner of a trademark to prevent others from using identical or confusingly similar trademarks for similar goods and services. In the U.S., trademarks can be registered or unregistered (also called "common law marks"). Rights in trademarks generally arise from use of a trademark, rather than through registration alone. For common law trademarks, the scope of trademark rights is limited to the geographic areas in which the particular trademark has been used. For example, use of "Who's Your Patty?" by Lion's Tap likely conferred upon Lion's Tap common law trademark rights throughout much of Minnesota. If McDonald's had been running a "Who's Your Patty" advertising campaign in New England, then McDonald's likewise would have had common law trademark rights in New England. Since the geographic areas would not overlap, there would be no conflict of each other's trademark rights. Trademark disputes generally lie where there is overlap – and the "junior user" of a trademark is the infringer. In Minnesota, McDonald's was the junior user of the "Who's Your Patty?" trademark – thus the lawsuit by Lion's Tap. In contrast to common law trademarks, the owner of a federally registered trademark has an exclusive right to use the trademark throughout the United States in connection with the goods and services in the registration. However, the rights associated with a federal trademark registration are always subject to the preexisting rights associated with common law uses. For example, if McDonald's would have filed a federal trademark application for "Who's Your Patty?" McDonald's would have had the right to the use the tagline everywhere in the United States -- except for where Lion's Tap had pre-existing "senior" rights (in this example, Minnesota). Also, the geographic area of Lion's Tap's common law rights would have "frozen" when McDonald's was issued a trademark registration. The most famous example of this principle involves Burger King. Back in the 1950's, two separate companies simultaneously began operating "Burger King" restaurants in different states (one of which became the Burger King franchise that we know today). When the Burger King franchise filed for and was issued a trademark registration, it gained the exclusive right to use the "Burger King" trademark everywhere in the U.S. -- except where the other Burger King had senior rights, which was Muttoon, Illinois. The Muttoon's Burger King's rights were "frozen" to Muttoon, Illinois and it could not expand without risking claims of trademark infringement from the other Burger King. Had Lion's Tap filed a trademark application back in 2005 when it began using "Who's Your Patty," McDonald's likely would have never adopted the identical tagline and Lion's Tap would not have had to file a lawsuit. This is because McDonald's likely would have uncovered the registration in its regular course of conducting trademark searches. A trademark registration puts others on notice of ownership of a trademark and is discoverable through search capabilities at the United States Patent and Trademark Office website and other trademark databases. The cost of registering a trademark is minimal compared to the cost of filing trademark infringement lawsuits. Similarly, the cost of conducting comprehensive trademark clearance searches prior to adopting a new trademark is minimal compared to the cost of defending a trademark infringement lawsuit. -- Molly Eichten is a member of the Larkin Hoffman Daly & Lindgren Ltd. Intellectual Property, Technology and Internet Practice.
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