McDonald’s Corp. will not be allowed to “monopolize” the Mc-prefix. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 18 December 2007, case file VI SA/Wa 1100/07, rejected McDonald’s Corporation complaint against the Polish Patent Office’s decision and ruled that a Singapore company was allowed to register MacCoffee mark for coffe products.
This judgment should make all trade mark practitioners aware of differences between legal systems. Especially when this Polish case is compared to holding in the case Quality Inns Int’l v McDonald’s Corp., 695 F. Supp. 198 (D. Md. 1988). The Court ruled that Quality International’s use of the name “McSleep” infringed McDonald’s family of marks that are characterized by the use of the prefix “Mc” combined with a generic word.
IX. GENERIC DEFENSE
Both Mr. Hazard, Quality International’s CEO, and Mr. Mosser, its vice president in charge of franchising, urged at trial that “Mc” has become a generic prefix meaning thrifty, consistent, and perhaps convenient. They urge that the notion of thriftiness comes from the association with the Scots and the perception that the Scots are thrifty. The Court was directed to the writings of H.L. Mencken, the famous Baltimore journalist and writer, who said:
Nearly all the English words and phrases based on Scotch embody references to the traditional penuriousness of the Scots, for example Scotch coffee, hot water flavored with burnt biscuit; to play the Scotch organ, to put money in a cash register; Scotch pint, a two-quart bottle; Scotch sixpence, a threepence; and the Scotchman’s cinema, Piccadilly Circus, because it offers many free attractions.
The American Language by H.L. Mencken (4th Ed. Abridged with Annotations and Material by Raven I. [appropriately] McDavid, Jr.), at pages 388-89.
Both Mr. Hazard and Mr. Mosser acknowledge that the aspect of “Mc” that includes consistency and convenience derives from McDonald’s and its extensive promotional efforts. They urge, however, that any such association with McDonald’s is now lost to the public domain by common usage.
In support of the contention that “Mc” as a prefix has derived a singular meaning and become part of the language, Dr. Roger W. Shuy, a linguist from Georgetown University, reviewed hundreds of journalistic uses of the prefix “Mc” for purposes of deriving its meaning and to evidence it common usage. Several examples will give a sampling of the broad range of his findings.
The term “McFood” has been used as follows: “It’s a push-button, do-it-yourself, convenience-oriented world. . . . Why cook when we can zap a Lean Cuisine in the micro, or order McFood from a drive-in McSpeaker.” Similarly, the word McLunch has been used for what kids are eating in school.
In the area of clothes, McFashion has been used in connection with smaller, specialized express stores for kids, imitating the concept of a fast food outlet.
McMedicine has been used to refer to prompt, inexpensive medical care centers, and McSurgery becomes surgery without overnight hospital stays.
McLaw has been used to describe the legal franchise phenomenon, suggesting that legal advice is dispensed through drive-in windows. Describing franchising in other areas have been McFuneral for funeral operations; McLube or McOil Change for the fast, little drive-in shops offering ten-minute oil changes; and McMiz for franchising of the Broadway musical “Les Miserables.” Even the franchising of local post office branches has been suggested to become McMail, and franchised tax preparation as McTax.
In the news and media area, USA Today has been characterized as McPaper, “fast news for the fast-food generation.” There was even a book called The Making of McPaper. The distillation of books or books without substance has been referred to as McBook, and similar characterizations have been made about digested news stories, McNews.
Even culture that has been subjected to mass marketing has been characterized with the prefix “Mc.” The proliferation of low-cost mass-produced art is McArt. One article even referred to McMozart.
Movies that are analogized to fast food which satisfy the appetite and taste good have been called McMovies or McCinemas. Similarly, there is McTelevision, McTelecast, and McVideo.
No subject seems to have been excluded. In connection with religion there has been a reference to McGod: “It was a difficult year for the McGod family network. [Jimmy Baker, Jimmy Swaggart, and Jerry Falwell] fought a major turf battle over control of the PTL McTelevangelism.”
One article perhaps summarized it all, “This is the era of instant gratification, of poptops, quick wash, fast fix, frozen foods, McEverything.”
A news report placed into evidence referred to the trial before this Court as taking place in the McCourt, which, of course, would make the judge the McJudge. While the Court understood that association with the Courthouse in Baltimore, it could not come to grips with the suggestion that the trial was before a McJudge. The Court could find few, if any, of the attributes of “Mc” used by McDonald’s or by the journalists otherwise to fit. Perhaps this McPinion will fulfill that prophecy.
After reviewing these articles and numerous others, Dr. Shuy reviewed the context of the “Mc” word and derived a list of 27 definitions for the prefix “Mc”: highly advertised; franchise; easy access; inexpensive; high volume; lacks prestige, comfort, cost; everyday; prepackaged; specialty chain; quick; convenient; reduces choices; self-service; mass merchandising; standardized; state of the art marketing; low brow; assembly line precision; uniform; market dominance formula; handy location; positive attitude; simple; comfortable; honest; looks okay; and working man. He reduced these to four terms which he characterizes as the definition of “Mc,” that is, “basic, convenient, inexpensive, and standardized.”
McDonald’s retained an outside firm to do its own internal marketing research into the public perception of the meaning of “Mc” and the conclusions reached were similar to those reached by Dr. Shuy. McDonald’s list, which was much shorter, distilled the following definitions: (1) “reliable at a good price,” (2) “prepackaged, consistent, fast, and easy” (3) “a prefix McDonald’s adds to everything it does,” and (4) “processed, simplified, has the punch taken out of it.”
Dr. David W. Lightfoot, a linguist from the University of Maryland, testified at trial on behalf of McDonald’s. He took no issue with the meanings derived by Dr. Shuy and by McDonald’s own internal survey. However, he disputed vigorously any notion that “Mc” is a generic word. He pointed out that “Mc” does not have a single easy identifiable meaning. For instance, of the 27 or so definitions derived by Dr. Shuy from the journalistic uses, many were not incorporated into Dr. Shuy’s condensed definition. Dr. Lightfoot concluded that all the meanings derived by Dr. Shuy, by McDonald’s and by him were essentially descriptive of McDonald’s Corporation and the reputation it has earned over the years. He concluded that whether or not there was a specific reference to McDonald’s Corporation in each article, in every case the allusion was to McDonald’s and its family of marks in a manner that was intended to be cute and playful.
The Court concludes that indeed the uses in the press of “Mc” plus a generic word are coined and novel to each article for the playful use by the author. In each case the allusion, whether express or implied, was to McDonald’s, sometimes flattering and sometimes pejorative. There was no single independent meaning of “Mc” understood in the language and its uses have been created to convey any one of several attributes that the author makes to McDonald’s.
This is not analogous to a circumstance where a product is referred to so frequently by brand name that even competitive brands are called by the one name and the brand identity is lost. On the contrary, the attribution of source to McDonald’s in the use of “Mc” is strong and persists. The Court notes that while most of the articles used by Dr. Shuy did not contain express allusions to McDonald’s, a very similar group of articles that he did not use in his analysis, but which conveyed the same meanings, made express allusions to McDonald’s. The Court therefore rejects any contention that McDonald’s has lost its right to enforce its marks because “Mc” has become a prefix with a single meaning that has become part of the English language and beyond McDonald’s control.
