By: Mark Malek
So the other day I was in the hallway with a couple of the guys from the office doing what most guys do when they get together – reciting lines from random movies! It is an amazing talent, and one that most every man I know can engage in. We can remember a movie line from 1979, but we can’t remember to follow up on the simplest request from our wives. Just proves the point that we are, indeed, simple creatures!
Anyway, during our movie quoting fest, someone brought up one of my favorite movies of all times, and easily the best example of how someone is abusing a trademark – Coming to America. Although that move is best known for Eddie Murphy playing about five different characters, and Arsenio Hall playing a few himself, trademark attorneys best know that movie for the blatant trademark infringement that is mentioned. That’s right – the scene where it is explained that McDowell’s is different from McDonald’s!
As you may recall from my last article, a trademark is a source identifier. In other words, when a product is marked with a certain name and/or logo, we want the consumer to be able to identify the source of that product without being confused as to what the source may actually be. The example that I often give to my clients is McDonald’s. No matter where I am, I know exactly what I am getting if I go into a McDonald’s restaurant. That is because I know the source of those goods when I walk in, and no matter which McDonald’s restaurant I am in, each of the products comes from the same source, which means that they are going to be very consistent throughout.
Think about it – if you go to a McDonald’s drive through in Key West, Florida, or in Portland, Maine, the cheeseburger that you get is going to taste identical – if not, it will be darn close. That is why it is so important for McDonald’s to maintain certain standards. You can bet that the folks in the corporate headquarters of McDonald’s would not tolerate a McDonald’s restaurant that puts out a product that is not up to their standards. Such a product is bad for their brand.
Back to the infamous scene from Coming to America where Mr. McDowell was explaining why his restaurant is different from McDonald’s:
As you will note, after Mr. McDowell points out that he and the McDonald’s people have some sort of misunderstanding, he goes on to note the following differences:
- They’re McDonalds – I’m McDowell’s.
- They have the Golden Arches – I have the Golden Arcs.
- They got the Big Mac – I have the big Mic.
- My buns don’t have sesame seeds on them.
You can’t help but laugh when you hear him describing these differences and trying to justify why he does not infringe on the McDonald’s trademarks. Again, trademark law is all about preventing confusion on the part of the consumer. I agree that many of the things that Mr. McDowell is pointing our are differences, but in the mind of the consumer, these differences are so slight that there will likely be a confusion on the part of the consumer. It is conceivable that a consumer could walk into a McDowell’s restaurant thinking that they are, indeed, walking into a McDonalds restaurant.
On another note – at the very least, this could be considered trademark dilution. I’ll discuss trademark dilution in another article. I hope this gives you an idea that you do not need to use the exact trademark of another in order to infringe on the trademark rights of another. One that is confusingly similar may also be considered to infringe if the goods and services are similar to those used in connection with the trademark. Similarly, however, you may be able to use the same exact trademark as someone else, provided that your use of that mark does not cause confusion. More on the intricacies of trademark law in future articles.