Who's Your Patty? or Where's Who's Your Patty?

Posted on September 21, 2009 by Steve Baird

As promised, here are some additional thoughts (beyond the very frank and practical non-legal advice already shared by Jason Voiovich) about Lion's Tap's trademark infringement case against McDonald's over the "Who's Your Patty?" slogan.

Here's the multi-million dollar question: What did McDonald's know and when did they know it? Those are questions likely to get a lot of attention in this case.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline from a drive by the single restaurant location? Not according to the exterior signage shown above.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by checking for state or federal trademark registrations? No, Lion's Tap didn't register in Minnesota or attempt to federally-register the tagline until a week before filing suit, well after McDonald's had launched its "Who's Your Patty?" campaign.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by conducting appropriate internet searches? Recognizing that most comprehensive trademark searches will examine the internet, here is where it might get interesting.

Just for you, I did a little poking around, and despite the fact that the current Lion's Tap website prominently displays the "Who's Your Patty?" tagline, The Wayback Machine (having archived updated content on Lion's Tap's website for these dates: November 5, 2005, December 27, 2005, June 26, 2006, January 26, 2007, January 27, 2007, December 1, 2007, and February 1, 2008), does not appear to show or document any use of the "Who's Your Patty?" tagline as late as February 1, 2008, the last time the site apparently was crawled by The Wayback Machine. Interestingly, those archived pages show other Lion's Tap taglines in use, such as: "Any Fresher and it Might Get Slapped," "Sponsoring the Napkin Industry Since 1977," "Yes, They Really Do Exist. Come See One for Yourself," and "Lions and Burgers and Fries, Oh My! "

So, where was the "Who's Your Patty?" tagline being used by Lion's Tap prior to McDonald's adoption and use of the "Who's Your Patty?" slogan? Was it being used in a way that McDonald's could have found it, using reasonable precaution and diligence?

You might be interested to know that my most recent visit to the Tap -- after the complaint was filed -- revealed surprisingly minimal use of the "Who's Your Patty? tagline within the restaurant interior (and none on the exterior of the restaurant). It wasn't on wall-board menus or the on-table menus, nor on any interior signage, at least that I saw. It did appear on one wall-mounted t-shirt with a price tag on it, and one of the servers was wearing a t-shirt bearing the "Who's Your Patty?" tagline.

Let's not forget that Lion's Tap is also claiming a "famous" mark in the "Who's Your Patty?" tagline, at least "famous" in Minnesota. What do you think, does this amount of use qualify for fame?

Stay tuned, as we continue to follow this very interesting case.

As a tangentially-related side note, ironically, Patty Wood, a real estate agent from Deer Park, Texas, appears to have beaten both Lion's Tap and McDonald's to the punch in registering the internet domain whosyourpatty.com.

UPDATE: Here.

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Lion's Tap Shouldn't Have Sued. At Least Not So Soon.

Posted on September 8, 2009 by Guest Blogger

A brief study in how the Lion's Tap could have had its burger and eaten it too.

I have to say, in the interest of full disclosure, I have an irrational love for the Lion's Tap.

Ever since I worked in Eden Prairie back in the 1990s, I've been hooked. Fast forward the better part of a decade, put our family a cool 35 miles away in Shoreview, and we still find ourselves driving nearly an hour on special occasions to grab a burger.

That's part of what made me so damn mad when I saw McDonald's latest billboards. Who's your patty? For Angus burgers? You've got to be kidding. Lion's Tap is "my" patty, thank you very much! They've had the slogan on their tastefully tacky t-shirts for over four years.

I thought about it though. I know Lion's Tap. But my guess is that only a small smattering of people do (perhaps 3-4% of the Twin Cities population if you were to survey). Who are they going to think came up with the slogan? And if they walked into Lion's Tap tomorrow, who would you think was ripping off whom? That's right. You guessed it.

It bugged me. I was a bit upset. I was ready to come to my restaurant's defense.

Until they sued.

You can read more here, but the fact of the matter is that Lion's Tap decided to run to the courts to remedy what is calls a trademark infringement case.

Here's the problem, instead of coming off as the victim (which you could argue Lion's Tap is), they come off as another coffee-in-the-crotch, show-me-the-money, lawsuit-happy opportunist. Just read some of the news stories and read some of the comments to see what I mean, here, here, and here.

Ick.

Let's explore what Lion's Tap "could have" done differently, and how it might have panned out.

Step 1: Calm down. I can't stress this enough. Righteous indignation is a dish best served carefully crafted. Yes, trademark infringement stings, and it can seem like a personal attack, but it is not. It's just business. McDonald's creative team could not have had an expectation of prior knowledge of Lion's Tap.

Step 2: Call the lawyer, but don't take off his leash [yet]. Your lawyer needs to understand the situation and begin preparing your case, but now isn't the time to act. Patience.

Step 3: Break out the digital video camera. Here's where you walk around your cozy little restaurant and ask your loyal customers what they think of McDonald's doing this to you. If they were like me, their candid responses would have been worth their advertising weight in gold.

Step 4: Get to YouTube. Post the video responses on YouTube. Right away. Start building a groundswell of support. Other people will make their own videos. People will comment. The videos would likely go viral quickly.

Why go though the trouble of Steps of 1 through 4 (instead of jumping ahead to Step 5)?

McDonald's -- your antagonist -- ends up looking pretty stupid, as though they copied someone else's good slogan. Or worse, they look like they're beating up on the little guy. There's no way Lion's Tap could pay for that type of positive exposure. Now, instead of a local hideaway, Lion's Tap could turn into a citywide sensation, introducing thousands of new people to the restaurant.

Now, Step 5: Sue the bastards. With public opinion behind you, now go after the money. No matter how it turns out, Lion's Tap would win. They win with broader exposure, they win with a reputation hit to McDonald's, and they could win a few bucks in court.  

Sorry Lion's Tap, you screwed up the "order". Only this time, you can't send it back.

Jason Voiovich, Principal and Co-Founder of Ecra Creative Group and Author of the State of the Brand weekly column

UPDATE: Here.
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All About Taglines and Advertising Slogans: Who's Your Patty Anyway?

Posted on September 3, 2009 by Steve Baird

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.

                                                      * * * * *

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.

                                                       * * * * *

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.

There is no question that Lion's Tap has "come hungry" to court, the question remains, will it "leave happy," perhaps, with some money. But, it's not about the money, right? We'll see, well maybe.

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.

UPDATE: Here, here, and here.
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Rapala's "More Hits Than Google" Billboard Update (Photo Included)

Posted on July 11, 2009 by Steve Baird

Finally, here is a photo of Rapala's "More Hits Than Google" billboard ad discussed previously in my Monday post entitled: "Rapala Fishing Lures: More Hits Than Google? Or, More Cats Than You Can Shake a Stick At? " Sorry for the delay folks.

Anyone notice the exceedingly small print located in the lower right corner of the billboard ad?

OK, leaving your microscopes at the lab, three guesses what it reads:

  1. How about, "If you're close enough to read these words, then you must be part of the work crew installing this sign, so please be sure to secure the corners to prevent the wind from turning the sign into a sailboat?" Cute, nope.

  2. What about "Wow, you climbed all the way up the ladder just to read this microscopic print, you're so dedicated, or perhaps just a lawyer obsessed with very fine print?" Yes, but no.

  3. Does it say, "Just say 'no' to Graffiti, or pay $500 fine?" Good idea, but again, no.

Drum roll, please, it reads: "Google™ is a registered trademark of Google Inc."

How do I know what it reads? Actually, it was an adventure. This sign is positioned to be visible to drivers and passengers heading West on Interstate 394 leaving Minneapolis, so I exited the Interstate and pulled on to the frontage road running parallel to the Interstate, then I parked in a business parking lot nearest the sign, then I got out of my car and walked toward the sign until I was probably 40 feet away to read it, and I was probably more than a couple hundred feet from the edge of the Interstate at that point. In case you're wondering, I still have 20/20 vision with the help of my glasses, and yes, I was wearing them.

Perhaps the print is so small because it only says what everyone already knows: Google owns the Google trademark. But, if Rapala knows that Google is a federally registered trademark, why use the ™ instead of the registration symbol: ®?

Also, anyone notice the small ™ superscript on the shoulder of the "e" in the "More hits than Google™" tagline or slogan? Is that there to indicate Rapala knows that Google is a trademark, to those who don't take the time to climb the billboard ladder? Or is it there to indicate that Rapala is claiming trademark rights in the slogan or tagline: More hits than Google.™? Does Rapala really think it can own a slogan or tagline that contains the famous Google® mark, perhaps to prevent Louisville Slugger or Country Music legend George Strait from adopting the very same tagline or slogan to tout the "hits" each has achieved with their own products and services?

If the small print is intended as a legal disclaimer, to help avoid liability, good luck. First of all, some courts have held that disclaimers often create more confusion than they are intended to lessen. Second, I can't imagine any court giving credence to a "disclaimer" that is not even legible. Third, the fact that the "disclaimer" doesn't say, "Used with Permission" or "Used Under License," seems to confirm that this use is not authorized by Google. If so and to be somewhat effective, shouldn't the disclaimer say that no permission to use is required because Rapala believes it constitutes fair use?

I'm simply fascinated by the fair use analysis that I assume Rapala considered before running this ad. So, more later on the "fair use" possibilities, stay tuned.
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