Defending Their Right to Sell 'Mac' and Cheese
Threat of a McDonald's suit has restaurateurs stuck
Berkeley blogger and soon-to-be restaurateur Allison Arevalo found herself in a David and Goliath situation last week when fast-food behemoth McDonald’s let her know it would sue if she went ahead with the chosen name for her new Oakland restaurant: Little Mac.
Arevalo and Erin Wade, co-owner of the new restaurant that will specialize in macaroni and cheese, rapidly determined they could not afford either the time nor the money to fight a lawsuit and have abandoned the name they have been using for the new restaurant for the past six months.
The pair had already invested in the name and were associated with it. “We had developed a logo and a website with that name, and all the press coverage we have had in the run-up to the opening has used the name,” said Wade.
Arevalo said they consulted a lawyer before choosing the name. The lawyer told them to go ahead and use it because there would be no brand confusion with McDonald’s. “We are not trying to profit from a McDonald’s association,” said Arevalo. “We couldn’t be further from McDonald’s in that we use artisanal cheeses and local ingredients, and our focus is totally local.”
The news that McDonald’s would take action came in a phone call Wade made to the company’s corporate council after friends expressed their concern over a potential conflict. Wade, a former attorney, who attended UC Berkeley’s law school, decided to double-check with McDonald’s to see if there could be any complications.
Wade was told that McDonald’s takes issue with any name with the word “Mac” or “Mc” in it. When she mentioned other restaurants whose names contained those words, she was told that if a restaurant came under McDonald’s radar the company would take action.
When asked for comment, McDonald’s issued this statement:
"The facts of this situation are inaccurate. This restaurateur actually contacted McDonald’s legal department to discuss her trademark concerns with her potential restaurant name. We had a cordial conversation and suggested she seek independent advice. At no time was legal action threatened nor was any legal correspondence sent."
The news came 48 hours before the pair was about to debut their mac and cheese dishes for a crowd of thousands at the SF Underground Farmers’ Market, hosted by Forage SF.
With a suddenly nameless venture, Arevalo and Wade hit on the idea of a “Name Our Restaurant” contest. They enlisted friends to hand out flyers explaining their situation, and asked people to submit ideas. The winner of the contest will receive a lifetime of free mac and cheese.
So far, they have had a great response with many suggested names, including Macalicious, Back to the Mac, Elbow Room and Nice & Cheesy.
The problem, said Arevalo, is that 70 percent of the suggestions have the word “Mac” in them. ”It just shows how hard it is to find a name for a mac and cheese place without the word 'mac,'” she said.
Douglas Greenberg
Unfortunately, small businesses rarely have the resources to fight a trademark claim, even a weak one, when lodged by a large corporation.
In this case, it's doubtful consumers would confuse "Little Mac" with McDonalds. But even so, McDonalds could simply claim trademark 'dilution' instead of infringement.
Here the idea would be that "Little Mac," (with its similarity to the well-known "Big Mac") may not confuse customers. But it dilutes McDonald's trademark (or in other words, diminishes its power as a corporate identifier). It's refutable, sure. But I doubt this woman has $100,000 to go to trial.
Nevertheless - this draconian idea that all Mc's or Mac's are 'off limits' is preposterous (are they going to shut down McCormick & Kulletos?). I’d steer clear of "Little Mac." But would not hesitate to use "Allison's Mac & Cheese", etc. Just my .02 cents...
Tizzie Lish
I don't like the misleading sub-heading for this story. The writer informs readers at the end that McDonald's did not actually threaten to sue these restauranteurs but the inflammatory headline gives the impression that McDonald's is acting like the ugly corporate citizen.
Don't get me wrong: I think McDonald is a very ugly corporate citizen but I have a higher standard for baycitizen.org. Tell your stories with more objectivity and you will have more power.
Your headlines significantly misrepresent this story and baycitizen.org is run by very media savvy professionals. Inflamed rhetoric is ruining this country. Be more objective, please.
Rose Roll
Well, it depends how truthful you think both sides are, right?
According to the Wades, their interpretation of the conversation with McDonald's is clear: "When she mentioned other restaurants whose names contained those words, she was told that if a restaurant came under McDonald’s radar the company would take action."
According to McDonald's, "We had a cordial conversation and suggested she seek independent advice. At no time was legal action threatened nor was any legal correspondence sent."
I tend to side with the reporter's interpretation. After all, why would the restaurant owners go through the hassle of re-branding their restaurant if they didn't actually have reason to believe they would be sued?
Benjamin Osgood
Tizzie makes a very compelling argument; the headline is misleading and readers appreciate non-biased objectivity. Let us not stoop to the Fox News level.
Dotty LeMieux
How abut "mac'n'cheese" a generic term I doubt they can win a court case over. They are big fat bullies. Let 'em sue. You can knock their clown shoes off.
Emily Keenan
They should be fine with "Mac" in the name because it has nothing to do with McDonalds and in this article McDonald's says they didn't even threaten to sue. I think they would have an even easier time if they hadn't made such a big deal about it in the first place... I just hope their Mac&Cheese will be as good as my moms :).