In the latest Weekly Wright Report:

• • McTrademarks Takes a Hit for McDonald’s in the EU – read now
  • Shutdown Squeezes Small Businesses More Than Anticipated – read now

McTrademarks Takes a Hit for McDonald’s in the EU

It turns out that the Big Mac isn’t as ubiquitous as it seems, at least in Europe.

The European Union Intellectual Property Office (EUIPO), Europe’s counterpart to our USPTO, recently ruled in favor of Irish burger chain, Supermac’s, that McDonald’s was unfairly sitting on marks that are not genuinely in use.

McDonald’s does sell its signature Big Mac in the EU and marked the name there in 1996 but could not sufficiently prove that it was using the name in commerce over the five-year period leading up to Supermac’s challenge.  Therefore, the EUIPO revoked the “Big Mac” mark.  Curiously, McDonald’s also marked the name “Snack Box,” something that it does not sell but Supermac’s does.  Some protections for “Mc” have also been canceled.

The trademark challenge arose from a brewing battle over Supermac’s expansion from Ireland into Great Britain and other parts of Europe.   McDonald’s assertions of the likelihood of confusion between the Supermac’s name and McDonald’s various marks had been blocking Supermac’s from opening new restaurants.

Although McDonald’s may appeal this decision, Supermac’s and other European food outlets are free to start using the name “Big Mac” and some variations of “Mc” Supermac’s is expected to revive  its expansion plans in light of this win.

Although this ruling only affects business and advertising in Europe, it serves as a useful reminder here in the US that trademarks and servicemarks protect only what is actually used in commerce.  While you can file an initial application with the intent to use, proof of use must follow shortly thereafter and be submitted with each renewal.  Squatting on names for future use is frowned upon and may lead to challenges and costly litigation.

The New Year is a great time to evaluate your business’ intellectual property.  This is one area where an ounce of protection is worth a pound a cure.  Trademarks and servicemarks may be coming up for renewal or you may have introduced new products or services that would benefit from protection.

Shutdown Squeezes Small Businesses More Than Anticipated

As I’ve written here before, government contractors may have a basis for claims to recover their costs and may contact our Government Contracts Group.  Putting aside the obvious impact to government contractors who have had to find work or layoff employees who were otherwise working on government contracts impacted by the freeze, the longest ever government shutdown also has an impact on non-government contractors as well.  Here are some other unanticipated impacts for commercial enterprises:

• The EPA and FDA have been shutdown preventing inspections, approvals of permits, and ongoing investigations.
• All SBA Small Business loans have been halted. Banks and borrowers can continue to supply paperwork and complete applications but the SBA cannot review or finalize the process.
• National Archives is shutdown preventing the access to records for millions of current and former government personnel.
• Countless government websites are not being updated or serviced during the shutdown preventing access to updated information
• SBA.govis not functioning to process new applications for certifications for socioeconomic programs or maintaining certifications for companies currently enrolled.  The SBA’s website states the SBA will grant extensions for deadlines affected by the shutdown and that guidance on deadline extensions will be provided once the shutdown ends.  This offers little solace to current procurements which require these certifications during the shutdown to qualify bidders or their subcontractors.
• Importantly, once the shutdown ends, the floodgates will reopen and there will be an expected significant lag in catching up on the backlog of SBA requests.
• Appeals to the SBA Office of Hearings and Appeals have extended deadlines for size determinations and appeals by treating each shutdown day as if it is a federal holiday. Any procurements awaiting appeal decisions on size issues will consequently be delayed.
• Payments to affected government contractors will certainly be impacted and delayed creating certain cash flow issues.
• IRS operations and the ability to determine letter filings and submissions are delayed. Attempts to contact the IRS general assistance line receive the following message: “Welcome to the Internal Revenue Service. Live telephone assistance is not available at this time. Normal operations will resume as soon as possible. You may continue to use our self-service tools.”

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