McDonalds v. McFest: Boo Freakin’ Hoo — Journalists should talk to trademark lawyers before writing whine-pieces

Not as much of a crook as you may think.

Poor Lauren McClusky. She is a 19 year old, civic minded, kind, compassionate kid who founded an organization that puts on charity concerts in the Chicago area to raise money for the Special Olympics. She called the concert series “McFest.” You know where this is going… or do you?

The story being told is one of a big bad corporation attacking the poor little charity for using its famous “Mc” prefix.

You couldn’t blame Lauren McClusky of Chicago if she were a bit squeamish about using her last name in this story without fear of reprisal from Ronald McDonald and his legal posse.

For McClusky, 19, finds herself at the center of a thorny dispute that involves a series of charity concerts she’s put on over the past three years. She dubbed the event “McFest” (more on that in a moment) — but McDonald’s sees that as an infringement on its trademarks, something the McDonaldland lawyers refer to as “the McFamily of brands.” (source)

Good god… you mean… McDonalds, the big multinational corporation, hates retarded children? (Yeah, I said “retarded“).

Oh, it gets worse. Listen to the tale of woe… of poor Ms. McClusky having to spend $5,000 on lawyers, battling the big bad clown who is trying to get her to change the festival’s name. Well that just sounds mean-spirited. It isn’t as if she named it McFest for an ill-intended reason.

Her original co-chair for the first McFest also shared the “Mc” prefix in her surname, so it seemed a natural. And indeed, not a single McDonald’s attorney seemed to object in 2007 and 2008, when McClusky’s McFests raised $30,000 for the Chicago chapter of Special Olympics.

So why, oh why, would McDonalds attack this noble charity?

The fact is, they didn’t, and the howls and cries in McClusky’s corner are coming from uneducated morons who don’t understand the first thing about trademark law — or they hope that their readers don’t. McDonalds did not file a lawsuit against McClusky. McDonalds didn’t even try and stop her from calling her concert series the “McFest,” they merely filed an opposition to McClusky’s attempt to secure a trademark registration for “McFest.”

To understand this case, you need to understand these terms:

  1. Trademark Infringement Lawsuit
  2. Common Law Rights
  3. Trademark Registration
  4. Trademark Opposition

In a trademark infringement lawsuit, you sue the other guy. You try and get money from him. You might try and get a court order that stops the other guy from using a confusingly similar name. If McDonalds had filed one of these against Ms. McClusky and her McFest organization, then McDonalds would get the asshat award this week. They didn’t, ergo they don’t.

McDonalds filed a trademark opposition. That might, to a layperson, sound like six of one, half a dozen of the other. It isn’t. An opposition is a world away from a lawsuit. When you use a trademark, like say “Legal Satyricon,” it becomes yours just through use. The very day you start using the mark, you can use that little “TM” that you see on trademarks. You can threaten other people with trademark infringement lawsuits, if you like. You can even file a lawsuit based on the rights you gain simply by using the mark — these are called “common law rights.”

If you plan on filing a trademark infringement suit based upon your common law rights, you will need to prove (among other things) that you own the trademark and that the mark is valid. But, if you get a trademark registration then you get to go into the lawsuit with those goals already scored in your favor. It becomes the other guy’s job to dis-prove your rights. So there’s one benefit of having a trademark registration.

In addition, a trademark registration is a valuable asset for your business. When I have clients who want to buy up other companies, one of the first things I do is audit the company’s intellectual property assets. A registered trademark, especially one that is more than five years old, adds a lot of value to the company, and it shows that the prior owners had their heads out of their asses. When I audit a company that didn’t even bother to file for a trademark registration, it makes me wonder what other corners they cut, and why they were so penny-wise and pound-foolish.

Another benefit of a registration is that it will block anyone else from registering the same (or a similar) mark, for the same goods and services. The government sorta gives you a free trademark lawyer when you have registered rights, but you have to protect common law rights on your own. So, lets say that you have a common law mark, but someone else files for a similar mark to be registered. You’re out of luck. On the other hand, if you had registered your rights, the USPTO would get in the middle of the fight, and you might not even need to raise a finger to stop the other guy from getting a registration.

Lets move on to the registration process.

When you apply for a trademark, you fill out a form with the United States Patent and Trademark Office. It gets sent to an examiner, and that examiner decides whether the mark is entitled to registration. They question whether it is distinctive enough, whether it is confusingly similar to another mark, or sometimes they get a big fat stick up their ass and question whether the mark is “immoral.” Remember, when the examiner makes her determination about whether the mark is confusingly similar to another mark, she just looks at other registered marks.

If the examiner says “no,” then you can still use the mark, you just don’t get that extra business asset, and you don’t get those two points at the beginning of a trademark infringement lawsuit.

If the examiner decides that the mark is okay, then she lets it move to the next stage. That stage is called “publication.” At that stage, anyone who thinks that the registration might harm their legal interests gets to speak up. Speaking up at this point is done in the form of filing an opposition. THAT is what McDonalds filed. You can’t win money in an opposition. All you get, if you win, is this: You block the other guy from having a registration for their trademark. You don’t even get a court order stopping them from using it.

This isn’t heavy-handed, it is smart business. McDonalds has a strong brand in its “Mc” prefix, and stopping someone from securing a trademark registration inside that turf is not the same thing as stopping them from using the name. If you don’t protect your trademark turf from minor incursions, after a while, the mark can die the death of a thousand paper cuts. McDonalds has some pretty well-established trademark turf, with registrations for McPen, McBurger, McBuddy, McWatch, McDouble, McJobs, McShirt, McPool, McProduct, McShades, McFree, McRuler, McLight, etc. Allowing a McFest to enter the field would cause some ever-so-slight erosion of their McHegemony in that area, and make their trademark worth just a bit less.

Look at it this way, if Ms. McClusky got her registration for McFest, then she could potentially license that trademark to Burger King for a concert festival. Yeah, really. Either that, or she could expand her tiny McFiefdom, and eventually cause some real branding problems for Grimace and the gang. Sure, the likelihood is low, but McDonalds didn’t get where it is by being lackadaisical about its trademark rights.

So lets recap:

MsMcClusky did not get sued, her trademark was opposed. McDonalds is not ordering her to change the name of her concert — they are just trying to stop a registration from creating a legal foothold inside their turf.

I am not sure why McClusky filed for a federal registration in the first place. Is she planning on suing a competitor? Is she going to license the name to other companies? Is she looking to sell her charity? Honestly, why does an annual concert that raises money for the Special Olympics need a trademark registration in the first place? Set that aside for a moment though — because her business plans aren’t any of my concern.

My concern is that this story is being portrayed as if McDonalds is beating up a charity that supports the Special Olympics, and taking their money. That portrayal is complete bunk. All McDonalds is doing is protecting its brand, and if McDonalds prevails, the charity will not (not necessarily) need to change its name, and it won’t need to pay any damages. The fact that the McFest has spent $5,000 fighting this so far is an indication that something greater is at stake — or just that Ms. McClusky is not making rational or informed decisions.

108 Responses to McDonalds v. McFest: Boo Freakin’ Hoo — Journalists should talk to trademark lawyers before writing whine-pieces

  1. Todd says:

    Little girls are good. Corporations are evil. Good v. Evil. What are you, some kind of Nietzsche freak?

  2. […] in a negative light for using their rights correctly.  Professor Randazza has posted about an excellent example of this kind of misinformed, crybaby reporting.  In pointing out the inadequacy of one […]

  3. blueollie says:

    You really do write well and explain things well. Too bad that even this simple, well explained post would be too long and nuanced for many.

  4. […] am I joking about that? Well, if you read Randazza’s excellent post about a case which has made the news, you’ll see that not paying attention to detail can provoke outraged when, well, the situation […]

  5. Excellent, easy to understand explanation of the situation, yet way above the head of most media outlets unfortunately.

  6. mc says:

    Good ‘splainin’ marc, but unfortunately, “Evil McEmpire Sues Special Olympics Charity” fits better on a Twitter line.

  7. […] onward to Professor Randazza’s post.  I’ll be back later. […]

  8. Jay says:

    Am I allowed to say how much I hate McDonalds and everything it produces and its shoddy customer service and everything else and therefore I’m dumping all manner of common sense and siding with the girl on this one? Am I? No…? Damn.

    In the real world of [lengthy] oppositions and appeals and further appeals, $5,000 grand is rather inexpensive. Sounds like her lawyers are cutting her some kind of deal, which is to say I am now wondering if I should switch to a new agent.

    • Yes, you are allowed to hate McDonalds. You can side with the girl on this one too. What you CAN’T do is side with her out of ignorance.

      • Jay says:

        OK, that’s good. I’ll do that. :) There are days, however, when I wish I could be blissfully ignorant. The happiest people always have no clue.

        Anyway, I vaguely recall that in Asia somewhere — Malaysia? Singapore, maybe? — McDonald’s Corp. lost their opposition or lawsuit against McCurry … or something close to that. Bah, I should pay more attention to my TM journals. Nevertheless, McDonald’s Corp. is incredibly aggressive in protecting its Mc and Mac prefixes.

        • I believe it was in Malaysia. And, under Malay trademark law, they lost. I don’t know a lot about Malay trademark law, but I don’t think that the result would have been the same here.

  9. Scott S says:

    McDonalds had to know they would be getting negative press about this when they decided to go ahead and come in opposition of a charity. I don’t quite agree with the reasoning they use either. They apparently didn’t trademark the name McFest themselves or there would not even be an issue here. Also, I don’t think McDonalds should think of themselves as owning the prefix Mc just because they use it a lot. It has been around a lot longer than the fast food chain and doesn’t belong to them. It’s sort of like Burger King opposing anyone else using any reference to royalty. It’s rather ridiculous no matter what the actual legal terms and conditions are.

  10. ignatz says:

    Remember when McDonald’s was sued because they intentionally kept their coffee near boiling temperature, and an old lady got 3rd-degree burns in her genital region? And they talked about the HORROR of “frivolous lawsuits?

    Well, now they are suing because apparently they think THEY own the rights to the names of about HALF THE IRISHMEN IN THE COUNTRY.

    I know corporations can be greedy, self-absorbed, and believe they should rule the planet – but McDonald’s doesn’t OWN peoples NAMES. What a DISGUSTING idea.

  11. Im never eating MC F UC K STAINS EVer again, long liv the king

  12. mc says:

    Speaking as an Irish person, ignatz, did you like, actually bother to read the post you just commented upon? Such as the part explaining about “lawsuits” and “oppositions”? (And before anyone gets wrong ideas, I’ve commented here as “mc” before because that just happens to be my initials.)

  13. I have actually read your summary and probably know a lot more about trademarks, copyrights, and patents than the average person. Nevertheless, I feel that Ms. McClusky should have the right to legally register the name McFest so that, if she wishes, she can license products with her McFest logo and thereby raise additional funds for the Special Olympics. Furthermore, she could grant Special Olympics the right to sell products with the McFest logo with no fear of objection/retaliation from McDonald’s. The fact that they are attempting to block her registration justifies any such fears. Furthermore, I am neither ignorant nor a moron and it is unreasonable to assume that anyone who sides with Ms. McClusky is ignorant or stupid. Informed people have a right to their opinion and, while several of the Internet articles are inaccurate, that is not true of all of them. In most cases it is the readers’ comments that are inaccurate as to the facts.

    • You’re allowed to side with her. At least you’re siding with her after considering all of the facts and the law. The morons in this equation are those who are blindly following the story. Your reading comprehension might need a little work, since I’m not sure where in my piece I said that anyone who sides with McClusky is ignorant or stupid. My point was that most who are siding with her are doing so out of ignorance and/or stupidity.

      Reading comprehension = C-

    • beverly says:

      anne, your explanation is the best. my point was mcfest had nothing to do with food,did not refer to mikyds. she just want to raise money for special olympics. i say go girl!!!!! how many other teenagers are doing things like this? what injury is mkyds causing when she is doing good?

  14. ABS says:

    Ms. McClusky has every right to fear reprisal from McDonald’s if she does not register the name McFest. Look at what happened when a restaurant used the name McCurrys. McDonalds did sue them for trademark infringement and it resulted in an 8 year long legal battle. Ms. McClusky is smart to protect the name she has been using, with no objection from McDonald’s, for 3 years. She would be foolish to develop any more brand recognition while exposed to the risk of a future objection from McDonald’s, and it seems pretty clear that such a risk is very real.

    • Reading comprehension = D. If she gets the registration, that would not protect her from a lawsuit from McDonalds. Trademark registrations are swords, not shields.

      • RPK says:

        marcorandazza knowledge of medievial armor=D. Shields are designed to protect the bearer during an attack. They are not designed to prevent the attack in the first place. Surely in the event that McDonalds (or some other evildoer) chose to sue someone with a registered trademark, the registration would afford some level of protection during the legal proceedings.

  15. BZ says:

    I hope Ms. McClusky goes all the way with this. I think we should all chip in and help her win this legal battle if she runs out of money. McDonald’s just gives me a bad taste in my mouth and I will never eat there again as long as I live. This will also be forwarded to a family members in Germany to forward there.

  16. mcmad says:

    My name is McDonald mabe I should sue mcdonalds

  17. Craig says:

    McDonald’s is just a bad seed! I fail to see where anyone could confuse, in a negative way, McFest with McDonalds. One provides a McCrappy product and the other benefits the community. The only thing diluting their brand is their actions.

  18. Mudbug55 says:

    All’s I can say is “You must work for corporate McClowns”. Infringmnet rights my a**. Those idiots think they can own something that is a birthright to anyone with an Irish descent. Holy crap batman,,,what a surprise.

  19. Dave says:

    Ditto what Anne Sullivan said…

  20. Craig says:

    marcorandazza it seems you are one of those people who feel you are smarter and better than others. You’re not. You spend too much effort in being critical of others. You must have brown eyes. You appear smart enough to known what you’re full of!!!!

    • another mc says:

      Perfectly said Craig…. I may not have a degree in bs like you marcorandazza, but I KNOW that you’re an asshole. There is NOTHING wrong with informing people of what trademark laws are, I think it’s great. To sit here and grade people for their comments? You seriously think way too much of your pompous over educated ass. I am supporting Lauren being well aware that at this point lawsuit has not, been brought against her. But McFest is NOTHING to do with McDonald’s and they are only making themselves look bad to hide behind corporate lawyers and pick on little girls trying to do some good in a screwed up world.

      • My blog, my rules. You don’t want a grade? Then go read and comment somewhere else. You don’t like it? Blow me. I’ll grade you on that too.

        • another mc says:

          You wish, I don’t do pricks that think they are better than everyone just because they have an education. Education does not equal intelligence, it also does not equal heart, something you obviously are lacking. Informing people so they understand the process is fantastic. Doing it with disdain and superiority, I can almost guarantee, will NOT get them to see your side or even bother reading the information.

        • Craig says:

          Really, Marcorandazza, a “blow me” comment! Is this what they teach at UF? How well has this attitude worked for you in trial? If you were unable to get your point across to the judge or jury did you grade them the same and as openly? Did you tell the jury or judge to blow you when the ruling didn’t go your way? Your point would’ve been better received and understood by others less educated than you if you had simply worked harder to clarify your point for the masses. All do not share the same level of education as you. The best teacher is the one who relates to many. Step down off your high horse and educate not denigrate. On a side note, how is you are so knowledgable yet graduated from UF?

          • I’m not here to fully educate the masses. I really should have a “starter blog” for people to read first.

            As far as UF goes, believe it or not, there are some pretty incredible departments there. I went to Georgetown Law and UF for a masters, and I learned more useful information in my UF masters’ program.

  21. Marion says:

    The only Mc name McDonald should be protecting as it so aptly applies to them is McJunkfood !!!!

  22. Marion says:

    Do you think McDonald’s would attempt to block my registration of the name McJunkfood? I’d sure like to find out….

  23. Marion says:

    Whether they did or didn’t try to block it, imagine the fun that could be had at the expense of the No.1 OBESITY BUILDERS OF THE WORLD !!!!

  24. G says:

    Yeah McDonalds sucks because they are an evil corporation. The allegations of child labor in China to create happy meal toys. The numerous reports of filthy workplace conditions. Their unyielding pursuit to destroy union activists.

    Quote from green peace “McDonald’s today stands for rainforest destruction. And that is one very ‘Unhappy Meal’ for the planet.”

    To me they are still crooks.

    Thank you for correcting me on this McClusky issue.

    Maybe they should call it McCluskyFest and not waste their money in court.

  25. Lynn says:

    I hope that McClusky will counter-sue or through negotiations recoup all that she has spent so it can go to Special Olympics as intended. This money wouldn’t even be a drop in the bucket of McDonalds fortune.

    • Reading comprehension = F. It is not a lawsuit, therefore, you can’t counter-sue. Jesus, this story has brought out all the dumbasses, hasn’t it.

      • Thomas says:

        The replys all came from well meaning folks. There were many worthwhile remarks. I enjoyed reading all of this. Only one guy came off as an asshole. I’ll give him an A for that.

    • beverly says:

      even if mkyds gives her the money back and backs off they will demand it not be discussed. i love the name McJunkFood, wow, that hits low. please keep this rolling for lauren and McFest. few teenagers would attempt this.

  26. macrojd says:

    I understand everything, but I hate the big companies doing that shit so I’m not going to buy any McShit burger anymore. Pretending that they are the owners off “Mc” is ridiculous. Bye bye Mcdonalds, see you in hell :-)

  27. Mojo says:

    It is unfortunate that someone is using their first amendment right to say such ignorant things, although the laws explaining trademarks are correct, this young girl is trying to do an amazing thing by raising money for a charity, and unfortunately we in this country have forgotten what that means. We have forgotten how to show our own children how to help others who are less fortunate then ourselves. This young lady knows very well that if she does not protect herself and her charity’s name, than by this time next year McDonalds ( oopps i used their name i am infringing on their name) will trademark the name and she will not be able to use it anymore. So i hope that the courts rule in her favor, i hope the tell This greedy corporation that they were ridiculous for trying to stop that name registration and i hope they are made to pay for all of her legal expenses. and as for the author of this idiotic article, shame on you for defending this company and trying to blame this young girl and accuse her of having other intentions besides that of defending her charitable organization. You’re truly an IDIOT.

    • J DeVoy says:

      Nobody’s criticizing this girl’s charity work, though it’s kind of obvious she’s trying to cash in on the “Mc” brand that McDonald’s has popularized, and which now applies to generic, large-scale things like McJobs and McPapers. And, because of that, McDonald’s needs to protect the intellectual property assets and goodwill that it has spent billions of dollars creating over the years.

      It sucks what happened to her, but you seem to have trouble separating the moral dimension from the legal one. So I’ll step in and give you a reading comprehension grade of D- because you understand what’s going on, but insist it’s wrong anyway.

      • Mojo says:

        It seems that anyone who does not agree with your point of view is given a low grade for reading comprehension. The funny thing is that Reading Comprehension has nothing to do with whether or not what is happening is right or not.

  28. Caped Jackass says:

    To Mojo and the others that seem to have their comment-browsing-buzz harshed by the reading comprehension grades dolled out:

    It is his blog. This site is popular because of the style and attitude you that you seem to dislike. If you were a regular here, or even perused around, you would see the writer’s tolerance for ignorance is a bit on the low end.

    People thinking that reading the words “law”, “McDonald’s”, and “charity” means that they have the necessary mental ammo to fire an opinion missile into the internet should be mocked.

  29. Amber says:

    Lawsuit vs. opposition is an important distinction to make but it doesn’t change the fact that McGreedy does not play well with others.

    McFest is not at all related to crappy burgers, golden arches, obesity, or anything McD’s stands for and therefore it is unlikely that anyone would assume they are connected.

    Was McDonald’s using or planning to use the name McFest? Do the have a similar event? Was there concern of assumed affiliation? I haven’t seen any evidence of any of these legitimate concerns. Why does McD’s oppose Ms. McCluskey registering the name? I am inclined to believe it is simply because they CAN.

    Or worse, perhaps McD’s really likes the idea of McFest and would like to make it theirs. Perhaps they think that they can intimidate her out of the arena and make a fortune from her great idea?

    If McDonald’s MUST use gimmicks to distract from the lack of quality of food they sell, well at least they could be respectful of the fact that the prefix “Mc” is neither original nor exclusive to crappy fried burgers.

    The bottom line is that there is just no darn need for McD’s to have all the fun “Mc” names.

    I don’t need to understand the trademark laws in depth to know that McDonald’s is being a bully. But since, even after reading this textbook/article, I would likely still fail a quiz on trademark lingo and laws, I’m sure I’ll get an ‘F’ for my reading comprehension.

    • Nah, you don’t get an F for reading comprehension. You seem to understand all the words. You miss a few nuances about trademark law though.

    • beverly says:

      amber, love your post. it sounds so sane. everything i said and thought.

    • How’s this for food for thought: Do you think, for a moment, that if we lived in a world without McDonalds (oh wouldn’t that be nice) that McClusky would have called the event “McFest?”

      If this kid was really so fixated on raising money for the Special Olympics, she’d just either a) change the name, or b) drop the registration and stay focused on the task at hand. This looks like the foot stamping of a tempestuous teenager, and nothing more.

      • another mc says:

        HER name is McClusky… HELLO!!!
        So from this statement are you suggesting that any individual or family with a name beginning with “Mc” starts a charity or business using our name we are trying to “cash-in” on McDonald’s fame? Even if said charity or business has absolutely nothing to do with food in any way shape or form? Or clowns? Or cheap plastic toys? Let’s get real for a minute, we’re not all out to become rich and famous, either on our own or on the coat tails of some corporation that makes bad food but we all have a right to our own names at the very least. McFest was not owned by McDonald’s nor does it look similar, this is corporate bullying in it’s finest. By the way, well said Amber!

        • HER name is McClusky… HELLO!!!
          So from this statement are you suggesting that any individual or family with a name beginning with “Mc” starts a charity or business using our name we are trying to “cash-in” on McDonald’s fame?

          Noooo…. Reading comprehension = F.

          If she called it the McClusky Fest, McDonalds wouldn’t likely have complained. It isn’t the McClusky Fest, it’s the McFest. As another commenter noted, her dad is a media type, and I have a hard time believing that she went into this wide eyed and naive.

      • Amber says:

        marcorandazza: your food for thought did get me thinking a bit about the influence of the McBrand on the name McFest.

        I do not know and will not guess as to what Ms McClusky’s thoughts and intentions were when selecting the name, however I DO think that McCulture makes the name McFest more interesting and funny.

        But still I think it’s human nature to use one’s own name as a basis for naming anything else. Ms. McClusky should still have the right to do just that despite the fact that McBrand has made two letters in common famous.

        My last name is possibly the most common and boring name on the planet and yet I would absolutely try to make a play on it if I were trying to name an event or any other brainchild of my own. But then again, my last name is not similar to any famous brands.

        Whether McFest is plain coincidence or clever marketing in the McClusky camp, I will never know. But I *still* think that there is no harm done for McD’s to simply let it go.

        As to your claim that Ms. McClusky is “not focused on the task of raising money for charity” and/or a “tempestuous teenager”; I hardly think that is fair.

        McBrand flexes their muscle at her and she is expected to acquiesce, lest she be deemed a spoiled brat? I think that she has both a right and a duty to protect herself and what she feels is rightfully hers from corporate bullying, and I commend her for standing up to McD’s.

        I think that if there is a “tempestuous teenager” here, it’s McDonald’s. And the onus of spending the charity funds wisely should not rest solely on Ms. McClusky’s shoulders.

        McD’s can really afford to share here. They will not be harmed in reputation or profits earned if McFest gets the trademark. Not to mention a good cause will benefit. So why oppose?

        McD’s should think back to the lessons learned in kindergarten: The sandbox is vast and the toys are plentiful; so SHARE and be kind to your fellow man.

        • I respectfully disagree with your analysis of the “harm” that McDonalds could suffer if it allowed the registration to continue, unchecked. McDonalds can afford to share, and the comments from McDonalds representatives suggest that they have offered to share — share money, but not share their trademark turf. As a trademark lawyer, I can assure you that if I represented McDonalds, I would have advised them to oppose the mark as well. This has nothing to do with kindness. McClusky is trying to create a corporate asset, which would (in McDonalds’ opinion) be located inside their yard. It seems (from the news articles anyhow) that McDonalds was willing to make concessions, just that they were not willing to allow this registration to pass.

          • Monarva Records says:

            Year: 1988

            In the case of Quality Inns Int’l v. McDonald’s Corp. 695 F. Supp. 198 before the United States District Court for the District of Maryland, Quality Inns Int’l stated that their intention to use the word McSleep was not an infringement of McDonald’s trademarks. They wanted the Court to make a declaratory judgement to that effect. McDonald’s counterclaimed that the use of the word McSleep by Quality Inns Int’l would be trademark infringement. The Court ruled in McDonald’s favor, stating in their opinion that “the prefix “Mc” added to a generic word has acquired secondary meaning, so that in the eyes of the public it means McDonald’s, and therefore the name McSleep would infringe on McDonald’s trademarks”

            This ruling is still in effect and has not been overturned, therefore there is no question that the word McFest would infringe on McDonald’s trademarks. So why waste the Court’s time, the matter has already been settled? Is this just a ploy to get attention? Seems like it…

            • And don’t forget McDonald’s Corp. v. Druck and Gerner D.D.S., P.C. d/b/a McDental, 814 F. Supp. 1127 (N.D.N.Y. 1993). Of course, both this case and the one you cite are not controlling precedent in Illinois. Nevertheless, it seems overwhelmingly likely (but not certain) that Ronald will eventually prevail.

        • Amber says:

          Have you any details as to what exactly McD’s offered her? All I have read suggests McD’s offered corporate sponsorship rather than cash donations. If it’s sponsorship they offered, I am not surprised she declined it.

          If McD’s offered her cash donation without any obligation (other than to feature their logo on the obligatory “Thank You Donors” poster), and she declined it, then it would seem that I have been wrong about Ms McClusky all along.

          If anyone knows more on this topic, I’d be interested to hear what exactly McD’s has offered.

          • I don’t… and understand that I have not yet seen a news article about this written by someone who pulled their head out of their ass before writing, so the reports may be bunk.

  30. mc says:

    A tempestuous teenager whose dad appears to be some kind of professional promoter and thus is likely well versed in both trademark/ copyright law and the fine art of getting a ton of publicity.

    I’m finding it entertaining that the same legal analysis would likely apply if the McFest was to raise money for the Klan or some equally un-warmnfuzzy group.

  31. ilosb says:

    Let the big “Mc” pay for all trademarks up front and then have a case against infringement. Otherwise, let it go. Would they sue ABC if they started a new series McDreamy? Would they be damaged if a charity went national with this name? McIdiots if you ask me.

  32. jim tackett says:

    You just don’t get it!! The fact they said anything to this young girl has been taken by the Public as Big Corporation vs Young Girl Charity. McDonalds has drawn the rath of the public not because they are informed about the law but just the opposite. All they see is mean McDonalds, and as a stock holder I don’t like it. McDonalds’ Mgt. could have handled this much better, like allowing the exception and becoming a sponser.

  33. Monarva Records says:

    Nobody knows what’s going on inside this girl (and her father)’s head but her (and him). If this was PLANNED to get all this attention and angry response, it’s working. The media just loves a story like this, and too many people don’t take the time to get the facts before they jump on the “bash the big bad corporation” bandwagon. You may not like McDonalds, but, you can’t blame them for not wanting to be used. The word “McFest” automatically implies McDonalds involvement to most people who know McDonalds, but DON’T know this girl and the festival she is promoting. That’s a fact. And, THAT’S what will get the attention of those who don’t know about her and her festival, the McDonalds involvement implication. It doesn’t take a genius to see what’s going on here, anybody with half a brain can see. The media and public are being played like a violin by someone who knows just how to do it. Others have used these same types of tactics very successfully, and people (the media) fall for it over, and over, and over.

    Doesn’t anybody use their brain anymore and get the facts before they react? Seems like people like being sheep…

    • Amber says:

      If Ms McClusky, et al, are playing this up for media attention then I will be the first to rescind my comments and say “shame on them”.

      But your claim that people react without facts is, I believe, unfounded in this case. So far, the facts available to the general public are limited.

      I don’t have the kind of connections required to get the inside story, so all I know is what is available online; and even that subject to a little bit of spin based on the opinion of the author.

      Based on what I have read (and the assumption that it is factual) I think that everything I have said is fair and reasonable.

      I am certain that there is more information on the topic than has been made available to me, but I can only comment on what I see.

      If you know something we don’t, then by all means, share. If not, then I think it is unfair to deem those who don’t see eye to eye with you as “sheep”.

      I don’t see anything wrong with forming a preliminary opinion based on what you know (no matter how much or how little). If anyone here formed an opinion this early in the story and refused to be open to new information then you might have a case for sheeple.

  34. Mopnarva Records says:

    You DON’T form an opinion if you don’t have enough facts to support that opinion, much less publish that opinion on the internet. The actual facts about this case have been published here in this blog and other reputable sites on the internet, yet it seems most people “prefer” to believe the incorrect information that is being disseminated in the media and on the internet. McDonalds filed an “opposition” to this young lady getting a “trademark registration” for the word “McFest”. They are not suing her for infringement, just opposing her getting this trademark registration for that word, and they are within their right to do so as to prevent any association with their registered trademarked words.

    These facts are public record and are readily available if you take the time to check them out. YET, it seems most folks who know this still prefer to get on the “bash the big bad corporation” bandwagon instead. I suspect that it is because they just don’t like McDonalds and their successful corporation and not necessarily based on the facts. AND, this bias is being used by some in the media and on the internet to create ill will towards McDonalds and create sympathy for this girl.

    The fact that most people are jumping on the bash McDonalds bandwangon (even some of those who know better) supports my contention that they are being led, and are following just like “sheep”…Those who know and understand copyright and trademark laws see where Mcdonalds is coming from and why they have to do this. Those who don’t know copyright and trademark laws do not see where McDonalds is coming from and why they have to do this, it’s that simple…

    • Amber says:

      Scroll up, my friend. I never claimed to be any sort of expert in this arena, but I still do believe that McD’s is not playing nice.

      I DO understand the difference between infringement lawsuit and trademark opposition (although I will admit that this is about the extent of my knowledge on the topic).

      I maintain that McD’s opposition to the trademark of the name McFest is unnecessary and tantamount to corporate bullying.

      If that makes me a sheep, then to you I say: “Baaaaaahhh”.

  35. GhostRider says:

    Lawyers!!!!!!!!!!!
    No American has any rights in this country any more.
    All lawyers are simply rip off artists serving no practical purpose. They only exists for the money and have sold their soul to the system and the devil.
    The mcdonalds corporation is shameful.

  36. […] Attention journalists: a trademark opposition and a trademark lawsuit are two different things [Legal Satyricon] […]

  37. Bret says:

    The flood of comments on this post have me in shock.

    Here, they have an entire legal issue laid out for them, and yet they still draw a invalid conclusion based on their initial emotional response. I assume “we’re only human” should make me feel better here, but it just sort of depresses me. What hope do these people have of understanding the details of government programs, the causes of national problems, or complex supreme court opinions, if they can’t understand a basic legal issue that’s put into plain language for them?

    The libertarian in me is crying.

    • Amber says:

      Bret-

      WOW. Such vague and general statements regarding the comments of various people with a plethora of opinions.

      What exactly constitutes an “invalid conclusion”? Sounds to me like it’s any that you yourself wouldn’t come to, since you didn’t make any specific reference to anything at all, really.

      Some of the folks commenting here have a better understanding of the issue at hand than others, but we’re each entitled to an opinion.

      I generally try not to make too many assumptions, nor engage in any name-calling, especially on the internet. But I will make an exception in this case.

      You come off like a self important ASS! Clearly, you believe yourself to be smarter, more enlightened, and more entitled to your opinion than others.

      I think you might see the world more clearly if you weren’t so busy looking down your nose at us lemmings.

      • Bret says:

        In this case, I would consider an invalid conclusion to be any based on the idea that McDonald’s is suing Ms. McClusky. That fact or an insinuation of that fact has been echoed in multiple comments. I count 6 such main comment threads and multiple replies.

        In case that wasn’t clear let me be more specific: if you draw an opinion based on something that didn’t actually happen then the opinion is *invalid*. Period. That doesn’t necessarily mean you’re wrong, but it invalidates the opinion.

        I really couldn’t care less what people think about McDonalds with regards to this matter. I’m far more concerned with them forming opinions based on fallacies. I’ve surfed the web most of my adult life and have never seen an example of this behavior more obvious than this.

        • Amber says:

          If this is the worst you’ve seen of it then I’d guess that your adult life started a short time ago. The comments made on this blog pale in comparison to the ignorance I’ve seen on the internet. Or perhaps my time here in web land has just been too long.

          In any case, I think there are a few things you might keep in mind:

          Not everybody who commented here claimed that McD’s sued the organizers of McFest. Some of us are aware that they simply opposed her trademark registration. In my case, it doesn’t make much difference. Whether McD’s opposed or sued – I stand by my claims that it was unnecessary and amounts to bullying.

          Precious few details regarding this matter have been made available to the general public. I can’t speak for anyone else, but my opinion on this matter is subject to change if new details emerge.

          Lastly, I don’t think any opinion is invalid. There may be many opinions based on ignorance or fallacies, but opinions are subjective in nature after all, and I don’t think they can be categorized as right or wrong and valid or invalid.

          • Not everybody who commented here claimed that McD’s sued the organizers of McFest. Some of us are aware that they simply opposed her trademark registration. In my case, it doesn’t make much difference. Whether McD’s opposed or sued – I stand by my claims that it was unnecessary and amounts to bullying.

            Then you’re a fuckin dumbass. Go read another blog. We’re all stocked up on dipshit readers already.

            • Amber says:

              Well this is quite an escalation, isn’t it? You went from a self appointed judge of reading comprehension who is insistent on his intellectual superiority to an abrasive and profane name caller.

              It kind of reminds me of junior high and what kids do when they don’t have a witty retort. You know, something along the lines of “Uhhhhh yeah well you’re ugly!”

              What can I say, I am flattered that MY posts seem to have gotten you all flustered.

              I think I will take your advice and go read another blog. After all, if I want to see people calling each other a “fucking dumbass”, well Craigslist Rants and Raves is perfect for that, isn’t it?

            • Yes, that would be a good place for you to go. Please make sure and tell my advertisers that you’re leaving.

  38. McLovin says:

    For the people who failed:
    If you think about it, McDonald’s is not taking on the young lady; rather, she challenged them to a duel. She fired the opening volley.
    She filed with a federal agency to potentially prevent McDonald’s, McDowell’s, fans of late President William McKinley, and tennis great John McEnroe from sponsoring an event called “McFest”.

    Now, if McDonald’s came after her for naming her event McFest as diluting their trademark, that would win them the ass-hat award. They didn’t. They’re simply trying to keep her from getting the government’s exclusive license to use the name for things like her McFest.

  39. jesschristensen says:

    The legal issues completely aside (and yes, Professor, I do get that the point of your article was about the failure of the media to accurately report the issue)…

    I wonder if McCluskey has really thought through the implications of naming her events “McFest”? Unfortunately for every person of Irish/Scottish descent—because of McDonald’s, the “Mc(Generic word)” moniker has become pretty universally associated with products of low quality prepared quickly and cheaply, using a great deal of filler and chemicals which cause dependency, and without regard to how those products effect the health or wellbeing of the consumer.

    Not sure that’s a great association for a charity event aimed at helping special needs people. I think the name McFest probably does more to degrade the value of the events McCluskey was putting on than to promote a positive association, whatever her original intent was. I say let McCrappy-Corporate-Food-Like-Substance-Purveyor have the name, and rename the Special Olympics events to a name that invites a more positive association.

    • That’s a good point. Just from a brand-strategy perspective, it does seem somewhat ill advised. Too bad they didn’t hire you as their lawyer, instead of the characters who told them that they ought to spend $5,000 to fight McDonalds for the privilege of joining the ranks of the “McMansion” and the “McJob.”

      Reading comprehension – A. Issue spotting – A.

  40. eric says:

    So point proven!!!! Anyone trying to use the name MC will get “opposed” by McDonalds. You can use the name you just can’t own it cause McD is the only one that can.

    • McLovin says:

      eric, it’s not about “anyone trying to use”, it’s about “anyone trying to gain exclusive use”. There’s a world of difference between the two.
      Think of it this way. You can name your son “Eric, Jr.”. She can name her son “Eric, Jr.”. Now imagine (for the sake of argument) that names of individuals can be granted trademark registration. Effectively, she is registering “Eric, Jr.” beyond simply giving her son that name. She doesn’t want to just name her son “Eric, Jr.”, she wants to prevent you from naming your son “Eric, Jr.”

      Maybe she would be entitled to do so, but you would be entitled to oppose it so that you could potentially give your kid that name, even if you were infertile, holding out hope for a cure.

      Practically speaking, anyone seeking to register a “McX” will probably face opposition from McDonald’s. McDonald’s can afford to do it; if you really don’t like the practice, get your friends together to start diluting the trademark. Name everything “McX” and try to register the trademark. Eventually, you’ll probably break through.

      Aside: Jessica–nice to see that you and I got the best grades.
      –Jay W.

  41. Dick Gassen says:

    First of all, I’m not a moron because I’m not an expert in trademark law, which leads me to believe the author of the article is an arrogant “a___hole.” So let’s get to the issue in layman’s terms. If McDonald’s doesn’t own the rights to “McFest” they don’t have the right to put up a fuss. They don’t own everything that begins with Mc. And if they think they do, they’re corporate bullies, pure and simple.

    • McLovin says:

      Dick, the two are not mutually exclusive. The author can well be an arrogant “a__hole” and you could be a “moron” (your term, not mine) simultaneously.
      McDonald’s doesn’t own the rights to “McFest”, but the law gives them express permission to put up a fuss–it is their right. They may lose, but McDonald’s trademarks a lot of “mc”stuff, and they don’t want to go the way of Xerox and Kleenex, where the trademark gets so diluted that anyone can use it for “copy” or “tissue”.
      It’s not about bullying, it’s about protecting their investment in the name McDonald’s, the McRib sandwich, McChicken, McNuggets, Egg McMuffin, etc. They might lose, but at the end of the day, they owe it to your pension (which probably owns shares of McDonalds), the millions of teens with McJobs, and the kids of Ronald McDonald house to protect their bottom line. (Yes, it’s also good for the bigwigs.)
      If you don’t like it, fight back on the same terms–seek to register 10000 other McTrademarks.

      As stated, they have the right to put up a fuss. Your Congress and President give them that right. If you don’t like it, vote them out. (Though, it would be bad if there were no trademarking. Else I could start making fake airplane parts under the name “General Electric”, confusing someone at Boeing, causing mass death.)

  42. beverly says:

    no matter what is right!! – Mc’s looks like a bully and her father being who he is looks like he is advising her to abuse the use of their logo.i think both have made mistakes and send a bad message to other teens. this country is haveing enough trouble with teens and their not getting an education and getting into trouble.
    maybe her charity will make out with all this noise and maybe not. maybe McD’s will be known as a bully and maybe a good business. who knows.

  43. Russell says:

    That’s great but you sound like one of McDonald’s lawyers. This was “very poor form” for McDonald’s. I have read the press release MickyD’s publicist released and yes, they feel they have done nothing wrong. To an attorney with no since of morality other than the law they are fine. As far as McDonald’s is concerned, the festival keeping the McFest name is not an option. They have made no public donations or gestures to right this fiasco. They are trying to bully a young woman who is helping others. They may have a legal right to keep someone from using her own name but it doesn’t make it right. I’m thinking asshat award.

  44. beverly says:

    i am a 71 yr old female who has always worked,raised her children,been married to the same man for 44 years. what revelance – i taught my kids to do right,get their education,respect and help others, think for themselves, nope not all things worked out right. encouraging young people to finish school and to be good citizens is what this country needs. at the least this young woman is trying and i don’t like the bullying and i think they did.
    this country is in trouble and we should start at the top to get things right. vote the idiots out and don’t let the big-wig companies rule them.

  45. PaulScarfo says:

    McDouchebag!

  46. McDonut says:

    I hear what you are saying about the fact that McDonalds are not sueing her and are just protecting their trademark. I can follow the logic of that. But I what cannot reconcile is that fact that any corporation could have the right to prevent someone whose name begins with Mc to trademark their own name or a variant of it. Why can McDonalds do it but no-one else? After all it is her name – does this mean no-one can ever register Mc Anything ever again?

  47. PaulScarfo says:

    stop staring at me

  48. Eric Hatfield says:

    Lovely how you criticize all of the “uneducated morons” who didn’t attend law school with a legit concern, to that average person.

    You attract more flies with honey than vinegar and that kind of intellectual/legal snobbery emboldens people the “anti-corporation” sentiment, even against a model corporate citizen like McDonald’s.

  49. Bill Alan Thomas says:

    This is a nation of “laws”, whether you agree with them or not, otherwise there would be chaos. If you don’t like ’em, then try to have ’em changed, don’t blame the lawyers for doing the job they are trained to do. Call your representatives and complain, get petitions or whatever to further your involvement, you can do that you know. To whine and complain without doing anything is childish. McDonalds has done nothing other than try to protect it’s name and reputation it has gained from others hanging on to their coat tails and profiting from it. The registering of the name “McFest” (albeit for a worthy cause) would be doing just that, profiting from the association implied. McDonalds has nothing against this cause or this girl, only the implied association of that name to them being “registered”. IMHO, this girl and her father knew what they were doing when they named the festival “McFest” and the association to McDonalds implied. McDonalds let that slide and didn’t complain, but they are not going to just be silent and let the “exclusivity” that “registration” would give that name pass by without opposing it, albeit it makes them seem like “corporate bullies” to a lot of people. THAT’S exactly why these laws are on the books, to protect interlectual rights. And, whether you like McDonalds or not, they do have rights protected by law, just like you and me. You do have the right to voice your opinion (in the proper place) protected by law, but it would be more productive and logical to become active and do something to effect change rather than doing nothing but complain all the time. So, what are you? A doer or a whiner?

  50. mirundap says:

    Like the guy above said it is true

  51. I know this case was eventually settled out of court, but I couldn’t resist pointing something out which remains relevant:

    McDonald’s does not own the prefix Mc. (at least according to Judges in Europe and Malaysia) and although McDonald’s continues to expand it’s range of patent names that INCLUDE the Mc prefix.McDonald’s still does not own it any more than it owns the “Mac” in “Macaroni and Cheese” (not that they aren’t trying to own that too).

    In order for McDonald’s to have a legitimate claim to opposition McDonald’s not only needs there to be a similar sound, but a similar product. If I had a “Mc” in my name and I wanted to be a Doctor I might set up an office named “McDoctor” and then McDonald’s would probably file an opposition, but it wouldn’t pass. If I instead made a store called “McBurger” and they didn’t already own it then they’d probably have a legitimate claim in filing an opposition.

    The reason why people came the the lawsuit confusion is because McDonald’s does at times file lawsuits against other companies who use the Mc prefix. Since the girl did endure an expense related to a legal filing the distinction between lawsuit and opposition is like splitting hairs when put in context even if the majority of your information was accurate.

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