October 13, 2006

From Spam to McDonald's in the trademark wars

Bill Poser's recent post, Spam Will Be Spam, describes the claims of Hormel that it had sole rights to the use of the name of its canned meat product and that use of this word for unsolicited commercial email is improper. Poser is surely right that it would be very difficult to show that consumers are confused by the two. Linguists who have worked on trademark cases are familiar with the major questions about trademark infringement. Do the names sound the same? Do they mean the same? These are good subjects for the use of phonetics and semantics. In some cases the question of whether the names look alike can be addressed by semiotic analysis, although issues of trade dress often fall into other categories of expertise. I'll save dealing with trademark laws abut "dilution" for another time, but clearly consumers are not very likely to confuse email spam with Hormel's meat product.

It's the more recent meaning of "spam" that is salient here. Poser points out that the European Union recently rejected Hormel's claim of trademark infringement. Hormel complained that spam once meant only Hormel's product and now has taken on a second meaning, unsolicited commercial email, but the EU's Office of Trade Marks and Designs, using a Google search, turned up a vastly greater number of hits for the "unsolicited email" meaning than it got for Hormel's meat product, and ultimately ruled against Hormel.

Trademark laws and practices can get pretty complex. Witness the 1988 trial of McDonald's Corporation v. Quality Inns International, Inc. Quality Inns (which later changed its name to the corporate umbrella title of Choice Hotels International) wanted to develop, for some unexplained reason, a chain of some 200 inexpensive hotels called McSleep Inns. McDonald's didn't care much for this idea and took QI  to court, charging trademark infringement, largely concerning the prefix, Mc-, even though the hotel would have no food service and would, therefore, not compete with the fast food business of McDonald's.

Here the "Aunt Jemima Doctrine," which deals with potential confusion, comes to play:

The principle that a trademark is protectable not only from an act of copying, but also from the use of any similar mark that would likely make the buyer think that the item bearing the similar mark comes from the same source as the trademarked item. (Black's Law Dictionary, p. 127)

Aunt Jemima Mills Pancake Batter held a trademark against which Aunt Jemima syrup was found to infringe, because syrup and flour were said to be food products that are commonly used together. Some, including Quality Inns, found it difficult to imagine how a hotel business that doesn't serve food could be confused with a fast food business. In the same way, some would find it hard to believe that Hormel's meat product could be confused with unsolicited commercial email. There are many precedents about this, including Notre Dame University v. Notre Dame cheese, Bulova watches v. Bulova shoes, and Alligator raincoats v. Alligator shoes, all of which were permitted to coexist. So there must be something else going on here.

To counter McDonald's claim, Quality Inns offered four arguments:

1. It argued, relying on the Aunt Jemima Doctrine, that there is no likelihood of confusion between McSleep and McDonald's.

2. It argued that the uses were not in competition.

3. It argued that it  could not be denied the right to use McSleep because Mc- was already being used before common nouns. Searches of telephone directories, credit reports, and media uses produced 94 currently used examples, including McArt, McCinema, McPaper, McTelevangelism, McJobs, McOil Change, McPrisons, and even McLaw, all of which conveyed most if not all of the meanings of basic, convenient, inexpensive, and standardized products and services, none of which referred to  fast food or hamburgers.

4. It argued that the Mc- prefix in McDonald's had now become generic, like the patronym from which it derived, and therefore had entered the lexicon of English with a recognized meaning of its own--basic, convenient, inexpensive, and standardized. Fast food is basic (not gourmet), is found everywhere (convenient), is relatively inexpensive, and consumers can be sure that the food they buy one day will be the same as the  food they buy the next (standardized).

It seemed clear that the  bound morpheme, Mc-, with the encouragement of McDonald's massive marketing, had undergone the process of lexical shift and lexical generalization. Whatever Mc- once meant about family ancestry, it now meant speed, efficiency, consistency, and basic standardization. Quality Inns tried to show that the claim that Mc- always means McDonald's is simply not true. Through it's own marketing, McDonald's had changed the lexical landscape.

These arguments failed to prevail. The judge ruled that Mc- had not become generic, that there was indeed a likelihood of confusion, and that Quality Inns could not use Mc- in the name of its proposed hotel chain (probably a good thing for Quality Inns, although not what they wanted).

Poser's last point in his post, "language changes and the world changes in ways that may adversely effect a business," didn't quite work out that way in this case. Apparently not all judges think that way.

The underlying theme in the judge's decision was that McDonald's had spent millions of dollars  advertising and marketing its name, prefix included, and something called "secondary meaning" won the day. One is left wondering why it is that the expenditure of money can determine who can have ownership of a word, much less a bound morpheme prefix.

Since the trial, McDonald's has gone on to apply for legal trademarks for many other words, including McSpace Station, McTime, McFamily, McMom, McSmile, McTravel, McBaby, McProduct, and McBunny. This company appears to have a monopoly on the prefix, Mc-, and the rest of us will have to get along as best we can. The funny thing is that after Quality Inns renamed their chain Sleep Inn, it became well known as a hotel chain that is basic, convenient, inexpensive and standardized, even without using the prefix, Mc-.

Note: For more details about how linguists worked in this case, see chapter 8 of my book, Linguistic Battles in Trademark Disputes, Palgrave Macmillan, 2002.

Posted by Roger Shuy at October 13, 2006 04:09 PM