Taglines and advertising slogans can be wonderful branding and marketing tools, but I’m thinking (not Arby’s, by the way) that McDonald’s is probably not thinkin’ that its (likely) famous I’m lovin’ it tagline accurately describes its taste for the federal trademark infringement lawsuit that Twin Cities-based Lion’s Tap recently slapped on McDonald’s for its whopper of an advertising campaign — promoting its new Angus Third Pounders – served up with the clever and simple play-on-words advertising slogan and question: Who’s Your Patty?
No doubt, McDonald’s likely will not make a run for the border, instead, it likely will instruct its team of lawyers to think outside the bun in designing a successful legal defense and response strategy, in the hope of not hearing the court say to Lion’s Tap in the end, have it your way.
For your reading pleasure, here is a pdf copy of the complaint filed last Friday in Minnesota federal district court. As you will see from the Minnesota State Who’s Your Patty? Certificate of Registration (attached to the filed complaint), Lion’s Tap waited to register its claimed mark in Minnesota until August 18, 2009, ten days before filing suit. As a result, Lion’s Tap clearly did not register the tagline "four years ago," or back in 2005 (the year it claims to have commenced use), as incorrectly reported ad nauseam, here, here, here, here, here, here, here, here, and here. Well, at least a couple of the media outlets covering the story avoided the mistake, and got the registration date right.
So, why is the date of registration significant? If McDonald’s didn’t know about Lion’s Tap’s use before rolling out its own use of "Who’s Your Patty?" — an entirely plausible scenario, since the mark was not registered, even in Minnesota, until well after and apparently in response to McDonald’s already commenced use — it starts to look like a much different case for Lion’s Tap (more un-Hamburglar-like), for reasons I’ll explain later.
For now, and to me, what is most surprising about the complaint is the very casual opening tone and pun-filled prose, a style of writing typically left for bloggers, some select federal judges, and David Letterman types, not litigants bringing serious claims in federal district court. Seth Leventhal of Minnesota Litigator Blog more gently referred to the complaint as having a "somewhat light-hearted tone not normally associated with complaints initiating lawsuits."
Consider the stark contrast of style between paragraphs 4, 24, and 47 in the complaint:
4. So, where’s the beef between our local favorite "David" (Lion’s Tap) and the mighty global "Goliath" (McDonald’s)? In a move worthy of the Hamburglar or Captain Crook, McDonald’s recently started utilizing Lion’s Tap’s "WHO’S YOUR PATTY?" trademark in conjunction with McDonald’s Angus Burgers. Lion’s Tap is forced to "Grimmace" and commence this lawsuit to protect its valuable "WHO’S YOUR PATTY?" trademark.
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24. Lion’s Tap has been seriously damaged by McDonald’s activities complained of herein, and unless such activities are preliminarily and permanently enjoined, Lion’s Tap and its goodwill and reputation will suffer irreparable injury of an insidious and continuing sort that cannot be adequately calculated or compensated in money damages.
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47. Lion’s Tap further seeks judgment for three times the amount of McDonald’s profits, Lion’s Tap’s damages, and Lion’s Tap’s reasonable attorneys’ fees, due to the nature of McDonald’s conduct.
With respect to paragraph 4, my patty, sorry, my daddy, always taught me that there is a time and place for humor, and the last time I was in court, the lawyers and litigants were all wearing suits with ties, and the federal judge was wearing a black robe, so my thought is leave the humor to those who aren’t being paid to convince others to treat the claims seriously. Might this be an example of PR consultants and legal teams working in harmony, as described by Guest Blogger Rose McKinney, and elaborated in a Comment by crisis management veteran Jim Lukaszewski, or did a PR consultant simply win over the client on how to draft this portion of the complaint?
In any event, gaining the attention it apparently desired, many in the media have quoted the most colorful language in the Lion’s Tap complaint, and some even refer to it as "priceless," but it remains to be seen how this lighter approach is viewed in the courtroom.
So, does McDonald’s deserve a break today? We’ll see.
Has Lion’s Tap proven with its rather casual approach to this lawsuit that it should look in the mirror when wearing t-shirts bearing one of its other taglines: "Any Fresher and It Might Get Slapped"? We’ll see.
Stay tuned for more legal analysis of this interesting case. Suffice it to say for now, if litigated, I’m thinkin’ this case likely will come down to the strength and scope of Lion Tap’s claimed tagline "Who’s Your Patty?" Why?
Basic taglines — unlike the truly famous Just Do It and Don’t Leave Home Without It taglines — have not consistently enjoyed a meaningful scope of protection: For example, in a somewhat similar reverse confusion case, a 2002 opinion from the Ninth Circuit Court of Appeals in Cohn v. Petsmart ruled that Critter Clinic was unable to stop Petsmart from using the identical tagline "Where Pet’s Are Family," in part, because both parties used the trademark "merely as a tagline to their distinctive business names" and this "emphasis on these housemarks ‘has the potential to reduce or eliminate likelihood of confusion,’" as the Petsmart and Critter Clinic housemarks "present the dominant commercial identity." Does the same reasoning apply here?
By the way, with respect to housemarks, that is, long-co-existing housemarks, anyone heard of Lyon’s Pub (not to be confused with Lion’s Tap)? They apparently have pretty decent burgers in the Twin Cities too.