After 5 Years of Nothing, McDonald’s Just Got Some Bizarre News

When I say McDonald’s, you say — 

Actually, what do you say? What’s the first thing that pops into your mind when you think of McDonald’s?

Among people I came into contact with while writing this, several immediately thought of the Big Mac. 

This makes sense. First rolled out across the U.S. in 1968, the Big Mac is the single-most iconic McDonald’s product, and McDonald’s sells an awful lot of them. 

Exactly how many? That’s a mystery today, but years ago McDonald’s put the number at 550 million each year in the U.S. Heck, “How many Big Macs does McDonald’s sell each year?” was once a classic go-to tech interview question, of the the answer-is-impossible-but-we-want-to-see-how-you-think variety.

This thought experiment comes after McDonald’s got some disquieting but also bizarre news.

In short, a European court ruled that McDonald’s hasn’t done enough in the past five years to use its trademark for “BIG MAC” when it comes to “chicken sandwiches,” and so it no longer has the right to exclude others from doing so.

Now, let’s make sure we make two things clear:

• First, this ruling is only about chicken. It doesn’t affect the Big Mac that you and I have known and (maybe) come to love, with its two all-beef patties, special sauce, lettuce, cheese, pickles, [and] onions on a sesame seed bun.
• Second, it doesn’t prevent McDonald’s from launching, say, a Chicken Big Mac in Europe. (It’s actually done that in the past.) Instead, at worst, it would theoretically mean McDonald’s couldn’t prevent others selling chicken products using a similar name.

So, how did McDonald’s wind up in a court in Luxembourg debating this? It dates back to at least 2017, when McDonald’s and an Irish restaurant chain called Supermac’s got into a wide-ranging trademark battle. 

The first McDonald’s opened in Ireland in 1977; the first Supermac’s opened the following year. According to the lawsuit, the Irish chain got its name because that was the nickname of its founder, Pat McDonagh, when he was in school.

Of course, that name might also make you think of McDonald’s. For that matter, Supermac’s even has a sandwich called the Mighty Mac.

The ingredients? “Two 100% Irish beef patties,” along with “burger sauce,” lettuce, cheese, onions, and ketchup on a “sesame seed bun.”

Honestly, it would have been a bigger surprise if McDonald’s didn’t get into a legal scrap, and as Supermac’s started to think about expanding beyond Ireland into the rest of Europe, the rulings piled up. 

This latest round about the Big Mac trademark in Europe turned on needle-threading issues like whether “chicken sandwiches” are a thing on their own, or whether they’re a subcategory of the idea of “meat sandwiches.”

Having read the judgment of the General Court, the ruling concludes basically that McDonald’s had gone five years without marketing “chicken sandwiches,” which it was required to do to keep the trademark for that purpose.

Apparently things like this commercial for a McDonald’s Chicken Big Mac in Sweden (part of the EU) didn’t count, since that was back in 2016. (H/T to my colleague Justin Bariso, who wrote about this development close to contemporaneously.)

OK, so what’s the upshot? Well, I’m a lawyer, but I’m not a) a European lawyer, or b) a trademarks specialist. So, while I was skeptical that this will really have any practical effect, I reached out to a true trademark attorney, Josh Gerben, founding partner of the law firm Gerben Perrott in Washington, D.C.

“The case does highlight how trademark law around the world relies on a use-it-or-lose it-system. Even the largest companies are unable to keep trademarks registered for products they no longer offer,” Gerben told me, adding: “Ultimately, I view this ruling as a very minor setback for McDonald’s and not one that is likely to result in any meaningful loss of trademark rights.”

And, here’s the official response from McDonald’s:

The decision by the EU General Court does not affect our right to use the ‘BIG MAC’ trademark. The BIG MAC trademark is incredibly strong throughout the world, including in the EU, and this decision will not in any way impact our ability to use or to protect the trademark against infringements. 

McDonald’s has held the EU BIG MAC trademark registration since 1996 and it remains in full force and effect for the iconic sandwich that our fans around the world have come to know and love. In partnership with our franchisees, we’re excited to continue to proudly serve our Big Mac and our local communities, as we have done for decades.

The next step for McDonald’s might be to appeal to the European Union Court of Justice, which is the EU’s highest court, but McDonald’s didn’t indicate its plans.

So, we land on the lessons for your business.

1. Rule number 1: If you have trademarks — whether we’re talking about the United States, the EU, or elsewhere — the key to keeping them is using them.
2. Rule number 2: I can’t help thinking that Supermac’s might already have expanded across Europe if it were called something else. So just because you think you can win a legal battle doesn’t mean that the smartest route might not be to avoid it.
3. Oh, rule number 3: If you’re ever temped to ask job applicants to figure out how many Big Macs McDonald’s sells, maybe you need better questions. The answers get bizarre pretty quickly.