McDonald’s Enters Trademark Dispute Over Use of ‘McFungi’
McDonald’s is one of the most widely recognized brands in the world. Even with global awareness, though, the company still finds itself in trademark disputes from time to time. Its latest intellectual property issue involves a clothing company known as McFungi. And while the corporation prides itself on putting smiles on faces, it held no punches in its opposition filing.
McDonald’s vs McFungi
In September 2020, the McFungi company filed a trademark application for a ‘McFungi’ design based on intent to use. The application is filed in relation to apparel and games. As of August 27, 2021, the company already had a large line of clothing available on its website featuring the design. Their path to registration, though, ran into trouble on August 27, 2021.
That’s the day McDonald’s filed a trademark opposition against the application. In its filing, the megacorporation states that registration of the design — which features “Mc” prominently along with a mushroom representing the “i” in McFungi — would create a likelihood of confusion among consumers. McDonald’s also states that dilution would occur by both tarnishment and blurring.
There’s plenty of evidence — including decades of valid and subsisting registrations — that McDonald’s uses the prefix “Mc” in its brand. Is this enough, though, to prevent another company from doing the same? In the filing from McDonald’s, the company make a pretty strong case that that’s exactly the case.
McFungi Up Against McDonald’s Trademark Supremacy
McDonald’s recently had a very public trademark loss in Europe. They lost their “Big Mac” trademark after a dispute with fast food purveyor Supermac’s. Perhaps this is why the company was so straightforward in its opposition notice. While it’s been close to a year since McFungi initially filed, it’s looking like they might not have known the history of McDonald’s trademarks.
The fast food powerhouse included the following Trademark Trial and Appeal Board (TTAB) and court cases in their opposition:
- McDonald’s Corp. v. McClain (TTAB 1995)
- McDonald’s Corp. v. McKinley (TTAB 1989)
- McDonald’s Corp. v. McSweet (TTAB 2014)
- McDonald’s Corp. v. McBagel’s (S.D.N.Y. 1986)
- J&J Snack Foods Corp. v. McDonald’s Corp. (Fed. Cir. 1991)
Each of these cases found that McDonald’s held rights over the “Mc” prefix and had established their brand upon it. Rarely does a notice of opposition contain so many examples of prior case victories. Of course, this likely has something to do with the company’s long history of protecting their trademark registrations. The question here though is whether consumers are likely to be confused between McDonald’s uses primarily related to food and the McFungi trademark used in relation to games and apparel.
What Happens Next?
Now that McDonald’s has submitted an opposition against McFungi, the latter has until October 5, 2021 to file an answer. If they fail to do this and don’t seek an extension, they’ll likely forfeit any claim they have over the trademark. If they do decide to fight back, though, they may have a difficult road ahead of them.
McDonald’s made a solid case to the TTAB regarding its rights — including judicial findings from the agency itself. If McFungi moves forward and no settlement is reached between the two brands, the case could stretch into 2023.
Even if this case continues to TTAB resolution, though, it may still end up in federal courts. At that point, monetary damages could find their way into the equation.