The Minneapolis Star Tribune finally reported on the Who’s Your Patty? trademark infringement lawsuit filed in August by self-proclaimed "David" (Lion’s Tap) against "Goliath" (McDonald’s), here. Our previous coverage is here, here, and here.
The Star Tribune reports that McDonald’s has not yet answered the complaint filed by Lion’s Tap. That’s true, but all that means is that Lion’s Tap filed, but has not yet formally served the complaint on McDonald’s. Had the complaint been formally served on McDonald’s, as the rules require before an obligation to answer arises, then McDonald’s would have twenty days in which to respond. So, the parties continue to negotiate for an amicable settlement.
No doubt, "David" would prefer not to have to formally serve the complaint because that is when the federal court’s machinery starts to turn and more significant money begins to be spent in pursuing the case. Of course, Lion’s Tap will need to formally serve the complaint on McDonald’s within 120 days of filing the complaint or risk the suit being dismissed, so, just before year end. We previously have discussed the strategy of filing, but not immediately serving federal court complaints, here.
The Star Tribune story also reports: "The Lion’s Tap says it has been using the phrase for at least four years and has had it trademarked in Minnesota. It also has a federal trademark application submitted." The use of past tense "had" appears to repeat the same incorrect fact that most of the media ran with when the story originally broke, namely, that Lion’s Tap had registered Who’s Your Patty? as a trademark slogan before McDonald’s began use of the same slogan, implying McDonald’s knowingly "stole" something of Lion’s Tap.
As you may recall, we already pointed out how nearly all the media outlets got this critical fact wrong, as Lion’s Tap did not register until ten days before it filed suit against McDonald’s, and well after McDonald’s posted billboards bearing the slogan. All the Hamburglar references don’t stick to McDonald’s if it knew nothing about Lion’s Tap’s discrete prior use of the Who’s Your Patty? slogan, an entirely plausible scenario, as we have already discussed, here.
Most interesting, at least to me, are the scores of reader comments to the Star Tribune story, here.
For the time being, they reveal that, for just about every enthusiastic Lion’s Tap fan who loves to support the small fry and is cheering on "David" there is a pretty harsh critic of Lion’s Tap, some even taking pot shots at the quality of its food. Indeed, it appears a substantial number would endorse Jason Voiovich’s caution: "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." So, you might say that PR can cut both ways.
Also, I learned from the comments about another reportedly great burger joint that appears to be worth the extra drive: Hopper’s Bar in Waconia. I’ll make sure to let you know how that goes. So, beware, PR efforts can unintentionally inform even loyal patrons of competitive alternatives too!
More on the legal claims, after the jump, in case you’re interested.
The touchstone of any trademark infringement case is "likelihood of confusion," and a typical case contemplates "forward confusion." Under a "forward confusion" theory, Lion’s Tap (as the first user a/k/a senior user) would need to establish that customers mistakenly think that McDonald’s Angus Third Pounders come from Lion’s Tap or are at least connected with Lion’s Tap. Let’s just say that there are some in the public commenting on the case who appear more than a bit skeptical of any consumer confusion claims. There are comments to the Star Tribune article voicing the same skepticism.
A much less typical trademark infringement case contemplates "reverse confusion." Under a "reverse confusion" theory, Lion’s Tap would need to establish that customers mistakenly think that Lion’s Tap burgers come from McDonald’s, or are somehow connected with McDonald’s, and perhaps that customers mistakenly think Lion’s Tap has infringed on McDonald’s "Who’s Your Patty" slogan. Small fry trademark owners often like the "reverse confusion" theory because it has yielded very large multi-million dollar monetary awards.
Tiffany previously discussed reverse confusion cases, here.
So, is Lion’s Tap case a "forward confusion" trademark case or one based on a "reverse confusion" theory? Seems to me it is more positioned like a less typical "reverse confusion" case, but at present, the language in the complaint probably is broad enough to encompass both theories, at least for the time being.
Assuming Lion’s Tap follows the reverse confusion path, one of the critical elements of a "reverse confusion" case is a knowing junior user. As such, for Lion’s Tap to succeed on a "reverse confusion" theory it will need to show that McDonald’s had actual knowledge of Lion’s Tap’s prior use of the "Who’s Your Patty?" slogan. It will be interesting to see what the facts end up showing on this critical point.