McDonald's Bullies Local Canadian Burger Joint Over 'Filet O' Fish' Trademark
from the not-lovin'-it dept
It is perhaps a bit surprising that we don't have an absolute ton of stories about fast-food giant McDonald's here, given the sheer size and fame of the company. In fact, the last post we did about the company was in the wake of it having just lost its "Big Mac" trademark in the EU, a circumstance the company was obviously displeased with. Still, McDonald's has certainly not been shy about protecting its IP in the past, even occasionally to extreme lengths.
The most recent example of this behavior concerns McDonald's bullying a local Canadian food joint over its "Effing Filet 'O Fish" sandwich.
Paul Shufelt, the owner and chef behind the local Woodshed Burgers restaurant, wasn’t loving what he saw when he opened his email on Wednesday. In his inbox was a formal cease and desist from McDonald’s Restaurants of Canada over one of his restaurant’s burgers: the Effing Filet O’ Fish. The name of the burger, the letter argued, violated the registered McDonald’s trademark of the phrase Filet O’ Fish, the name of one of the fast food giant’s most prolific sandwiches.
“McDonald’s is concerned that your restaurant’s use of Effing Filet O’ Fish, particularly in association with a sandwich or burger menu item, is likely to cause confusion among consumers and is also likely to diminish and dilute the strength of McDonald’s trademark,” the letter read.
Okay, so a couple of things here. First, Woodshed is a tiny 40 seat joint that is a local eatery and isn't the kind of place one goes and is confused into thinking it's a McDonald's. Second, the "Effing Filet 'O Fish" sandwich at Woodshed is a fairly descriptive name, given that it's a sandwich chiefly comprised of an effing filet of fish. That point isn't quite so strong, since McDonald's can probably argue that it's use of the mark has transformed it from something generic to something closely associated with McDonald's.
But thirdly, if McDonald's thought this was going to get Shufelt to change the name to something McDonald's would consider innocuous, well...
In compliance with the cease and desist, Shufelt renamed his burger to the McEffing Fish Filet — his flippant way of complying with the massive company’s cease and desist.
“Let them come at us, I guess, and they can have a pissing match with a small, 40-seat restaurant in Edmonton over the name of a burger,” Shufelt said.
Great job, McDonald's lawyers. This is important work you're doing.
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Filed Under: canada, effing filet o fish, filet o fish, likelihood of confusion, mceffing fish filet, paul shufeit, trademark
Companies: mcdonald's, woodshed burgers
Reader Comments
The First Word
“moron in a hurry
Trademark is, first and foremost, a consumer protection mechanism. If there is a real risk that the consumer will be confused as to the origin of the goods or services, then there is likely a problem with infringement.
On the facts presented, I doubt there was real risk of confusion. A customer at the restaurant already knows he came to a food establishment rather than Mickey's. He is likely to observe the Canadian flavor in the product name. And, assuming he is familiar with Mickey's at all, he knows that a name like Effing Fillet would never be found there.
So, assuming our moron is familiar enough with Mickey's for the trademark to register in his consciousness, he knows this is not it.
The problem, if anything, would have been the reverse. A Canadian wanting the Effing Fillet and asking for it by that name at Mickey's might be disappointed by what he got. Of course, he is free to walk outside and observe that he is not at Woodshed Burgers.
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If we don't filet the fish, they would be whole
Fish filet's. Fish filet's. Or, going the other way, filet of fish. Purely descriptive. So I am trying to figure out how a missing 'f' and an added single apostrophe could turn something purely descriptive into a trademark. Anywhere.
Going one step further, I seriously doubt that McDonald's filet of fish is in fact a fish filet. I might be a part of a fish filet, but it is not in fact a whole fish filet. It is even possible that it is comprised of pieces of fish stuck together with a very sticky fish protein which is pressed into a mold (that is if one notices that they are all the same size and shape, unlike, well, you know, fish filet's) then breaded and frozen.
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Re: If we don't filet the fish, they would be whole
Not Fish? no wonder I don't eat it! LOL
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Re: Re: If we don't filet the fish, they would be whole
and I commercial fished in the Gulf O' Alaska for more than a decade.. I must have developed some instinct reaction to 'filet o' fish!"
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Re: Re: Re: If we don't filet the fish, they would be whole
I've eaten so much fish in my life I'm growing gills. Thankfully it was not 'filet o' fish' from Mikeys, I don't know what I might be growing now, maybe an urge to drive down the middle of the road and do sudden uturns..
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Re: If we don't filet the fish, they would be whole
So what you are saying is that if you wandered into this cafe wanting a fish fillet burger, you are too stupid to notice that you were not ordering from a McDonald's. Right?
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Re: Re: If we don't filet the fish, they would be whole
Um. Comment went to the wrong place. Sorry.
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Re: If we don't filet the fish, they would be whole
Aren't slight misspellings of ordinary words an extremely common way people try to make something trademarkable? A common pattern among internet companies is to attach the suffix "r" to a word, standing in for "er" but omitting the "e".
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Irony alert!
McDonalds never wanted to market the Filet 'O Fish in the first place. A franchise owner in Cincinnati needed a sandwich to serve on Fridays during Lent since Cincinnati has such a large Catholic population. The owner asked McDonalds to offer a Friday sandwich and the owner was told "No!" The franchise owner created and offered the sandwich on their own and it sold like crazy! McDonalds saw how popular it was and adopted it throughout the U.S.
And now they fight to protect the very thing they said wasn't needed and that they didn't want to sell.
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I don't eat mcdonalds food; one reason is the "filet o fish ™️"
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out_of_the_blue's heroes, ladies and gentlemen! Long live corporations, patron saints of intellectual property!
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I have eaten way too much McDonalds over the years. The fillet o fish is good without the tartar sauce. I don't know why but I put on some extra pounds for a few months when I greatly increased my intake of them though even though the food I replaced was supposed to be less healthy.
At least if the guy in Canada is going to lose he is producing good comedy while doing it.
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So many problems I have with TechDirt's portrayal of this story.
If the trademark shouldn't be valid, argue against the trademark being valid. That's not mentioned in your story, at all. But so long as it is valid, this is very clearly a violation of trademark law. It isn't even "well, if you squint at it just right, it sort of resembles it." No, it's a wholesale ripoff of the registered mark in the exact same industry. No idea where you get off calling that bullying.
Woodshed Burgers may have one location, and they seem more sit-down than fast food, but they are certainly competing directly with McDonald's in terms of their menu. Burgers, chicken and fish sandwiches, and fries. Sound familiar?
Third, Woodshed seems to be going out of its way to misappropriate names for their entrees, such as their chicken chicken sandwich being dubbed the Crispy Colonel. Another is called the Smurf, which while I'm pretty sure there's not a burger-related trademark involved, is certainly not being used just for it being an interesting arrangement of letters.
Finally, Woodshed itself is one location, but they do have at least one related restaurant with them under "Robert Spencer Hospitality". Doesn't seem to be much on the web about the parent company (and the link on the Robert Spencer logo on Woodshed's site goes nowhere) but it's clear that it's not just one guy running his passion project restaurant.
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Re:
So..... how much did you get paid for this comment?
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Re:
If the trademark shouldn't be valid, argue against the trademark being valid.
No problem, as a purely descriptive term with the only difference being the absence of a single letter in a fashion that's hardly unknown, it should never have been granted.
That's not mentioned in your story, at all. But so long as it is valid, this is very clearly a violation of trademark law.
The purpose of a trademark(theoretically at this point...) is to avoid customer confusion, and someone would have to be seriously drunk/high to walk into what is clearly not a McDonald's, see a name that is descriptive of what the product is(a filet of fish sandwich) and think they're in a McDonald's/the place is partnered with them simply because the name is spelled 'o rather than of, ignoring the rather larger difference that I highly doubt any McDonalds menu item starts with 'Effing'.
Woodshed Burgers may have one location, and they seem more sit-down than fast food, but they are certainly competing directly with McDonald's in terms of their menu. Burgers, chicken and fish sandwiches, and fries. Sound familiar?
Absolutely, it reminds me of any other burger place(Burger King, Purple Turtle, Sonic has three of the four... I'm sure there are numerous others that people could name) that isn't entirely focused on burgers and want to offer others stuff too to draw in people who might not always want a burger.
Third, Woodshed seems to be going out of its way to misappropriate names for their entrees, such as their chicken chicken sandwich being dubbed the Crispy Colonel. Another is called the Smurf, which while I'm pretty sure there's not a burger-related trademark involved, is certainly not being used just for it being an interesting arrangement of letters.
Yes indeed, all three(out of twenty-two) of the items on the menu could be seen as referring to other fast food places(or in the case of the feature a show/book), truly the most dastardly of fiends.
As for the Smurf, had you bothered to read the entry you would have seen that it includes 'blue cheese aioli', and as there are old cartoons involving blue characters it makes for a nice little reference to the cheese/characters in a neat way.
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Re: Re:
That is a completely different story than the one that appears at the top of this page. One I happen to agree with, by the way.
The point is the owner is certainly not the innocent he makes himself out to be and is intentionally capitalizing on the trademarks of others. The "Crispy Colonel" (which is certainly not merely descriptive when taken as a whole mark) is a US trademark. As I noted elsewhere, while it's not a registered trademark in Canada, it certainly isn't very likely the name was invented by this guy out of whole cloth and just reinforces he knows exactly what he's doing, which is bad dealing.
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Re: Re: Re:
The point is the owner is certainly not the innocent he makes himself out to be and is intentionally capitalizing on the trademarks of others.
If by that you mean 'referencing others', something that happens constantly in basically every branch of society and culture then yes, he is 'capitalizing' like crazy. With three items on the menu.
Again, the purpose behind trademarks is to prevent customer confusion, and no-one who isn't so drunk/high that a door would provide a significant barrier is going to see those names and think they're in a McDonalds/KFC/cartoon.
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Re: Re: Re: Re:
Customer confusion is much broader in scope than mere confusion as to identity. The use of a mark, for example, can also contribute to a misimpression that the user stands in some form of a business relationship with the trademark holder, and that the latter is thereby vouching for the former.
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Once again, where are you finding the idiots who would actually think that? What bars are you getting your test group from who would look at a similar or referential name in a completely different store and jump to the conclusion of 'they must be involved with another company, the names are similar' as opposed to 'hey, they're referencing that other company with that name, neat'?
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Re:
Speaking of “bars”, which ones have vouched for your expertise in trademark law? Your focus is much too narrow and removes from consideration a large swath of the substantive law and activities that are problematic.
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Re: Re:
How's your Evan Stone defense fund coming along, Slonecker?
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By all means though, present your credentials if that matters
Ah, I see I don't need to take you seriously after all, thanks for that little time saver.
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Re: By all means though, present your credentials if that matter
If plodding along with an understanding of the law that is wrong is your goal, then by all means continue along your chosen path.
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Re: Re: By all means though, present your credentials if that ma
Strange, not seeing any credentials presented to explain why I should take you seriously, you'd think after asking for them from me you'd be eager to show why you should be taken seriously by presenting your own...
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Re:
Why are companies allowed to trademark every product name when the intent of trademark is to identify the source or seller. The identification is done by the trademark of McDonald's Golden M. Getting a trademark on every single product is an attempt to control the market for competing products, and not to identify the source.
If Heinz had trademarked tomato soup, Campbells would have difficulty finding a name for its tomato soup
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Re:
Points well made, unique to this site in trademark matters.
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Re: Re:
All wrong, but sure, well made. I guess.
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Re:
That's a bad example. The word "colonel" isn't a trademark, is it? A specific colonel is associated with chicken, and the image is trademarked, but the implication that one is eating a colonel rather than something prepared by one is quite different from the way that's normally used.
Did you ever watch the show? The Smurfs brought that on themselves, by using the word "smurf" generically in every context imaginable, e.g. "smurfing". Woodshed could've been more creative here.
That said, I generally agree that this story doesn't involve "bullying". McDonald's would have shown better judgment by privately noting it as a parody and publically keeping quiet.
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Re: Re:Time to get onthis bandwagon
Hello, My name is General Tso and I make chicken. My chicken is well known across the planet and has received many accolades. With this in mind, I most humbly request the all Chinese restaurants to cease and deist.
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Re: Re:
No, but "Crispy Colonel Sandwich" is, by KFC, in US trademark serial number 87878351. Granted, that mark does not appear to be registered in Canada. "Colonel Sanders" and "Colonel's" are, though.
But it also seems extraordinarily unlikely that the proprietor of this restaurant who just so happened to name his fish sandwich the same as one giant fast food restaurant happened upon the name of his chicken sandwich, which is identical to another giant fast food restaurant's, by happenstance. If anything this just provides further proof of bad faith in the name of his fish sandwich.
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Re: Re: Re:
So they are using "punny" names, so what? It still comes down to, will this cause customer confusion, to which the answer is clearly no.
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Re: Re: Re:
Oh, I didn't know they had a sandwich by that name. Yeah, even if not registered in Canada, that's a sketchy thing for the independent restaurant to do. I've gotta wonder if they wanted to intentionally play the victim for publicity.
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Re:
Too true. In this case I disagree with the article. Size doesn't matter. It doesn't matter if it's one 40-seater or the whole Burger King chain - if someone else calls their fish sandwich Filet o' Fish they are copying MCD's. How big a restaurant chain does it have to be before it's Ok for them to enforce a name? And if say, Wendy's sold the same thing and McD sued, and Wendy's lawyers said "but you said it was OK for Woodshed". You either defend your trademarks because they are trademarks, or they become the aspirin and kleenex of the commercial world. besides, if the Woodshed version tastes very different 9or really bad, or really good) it can confuse people who expect that is what that name means. You can call a fish sandwich a lot of other things, or leave in he "f" or whatever. Woodshed decided to deliberately copy, and the essence of trademark law is "no, you can't copy".
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Re:
McDonalds should have to prove their 'filet o' fish' IS FISH and not eel or bottom crawling sort of mushy invertebrate to even attempt to validate that mark. ™️⁉️
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Re: Re:
LOL!
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I have to side with the evil corporation on this one. If someone came out with a product called "Evil Coke', I would expect the lawsuit to ensue." ( Pun intended.)
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Re:
Not the same thing. Fish is generic while coke is not as much - maybe a little.
Now if you said evil fish ... or fish 'o evil you might be on to something.
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Re: Re:
Eh, "coke" is just derived from "cocaine", named from the coca leaf. "Coke" is still short for cocaine, although Coca-Cola hasn't contained it since 1903.
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Re: Re: Re:
They used to claim its use stopped in the 1930s. See how history changes these days? They can pretty much do or say anything they want anymore with such an instant access to all the resources of history at their fingertips to edit whatever they'd like to adjust public attitude to fit today's narrative.
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Wendy's no longer sells a fish sandwich. I no longer go the the King's place for the concrete milkshakes. Go to McDonald's for a McStabbing or a Big Mac once or twice a year. The lawyers are smiling all the way to the bank.
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Re:
All that grease gives me unbearable indigestion. Can I sue too?
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PS:
Effing is the name of their small seafood supplier. ; ]
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moron in a hurry
Trademark is, first and foremost, a consumer protection mechanism. If there is a real risk that the consumer will be confused as to the origin of the goods or services, then there is likely a problem with infringement.
On the facts presented, I doubt there was real risk of confusion. A customer at the restaurant already knows he came to a food establishment rather than Mickey's. He is likely to observe the Canadian flavor in the product name. And, assuming he is familiar with Mickey's at all, he knows that a name like Effing Fillet would never be found there.
So, assuming our moron is familiar enough with Mickey's for the trademark to register in his consciousness, he knows this is not it.
The problem, if anything, would have been the reverse. A Canadian wanting the Effing Fillet and asking for it by that name at Mickey's might be disappointed by what he got. Of course, he is free to walk outside and observe that he is not at Woodshed Burgers.
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'Close call that'
A Canadian wanting the Effing Fillet and asking for it by that name at Mickey's might be disappointed by what he got.
Given the cashier would likely assume the customer was swearing at them by referring to it as the 'effin filet' and ask them to leave, sparing them from accidentally eating at McDonalds, I suspect 'disappointment' would probably not be the emotion felt.
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Re: 'Close call that'
https://www.youtube.com/watch?v=jGQQuaVL0R0
And some fackin diddy donuts!
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Re: 'Close call that'
As much as people swear these days, I'd think that almost no place would have any problems with a customer swearing, much less a place like McDonald's. I guess you haven't overheard some of the folks the last time you went out... or maybe people are unusually polite where you live. :)
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Re: 'Close call that'
At MickyDs, I once asked for an EggaMuffin and the guy just stood there with a blank face.
I did it for the LOLz
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Re: moron in a hurry
No, not true. Volkswagen can't sell a Mustang Bug just because there's no risk of confusion with a real Mustang. They can't sell a Coke Beetle (red with white stripe) just because nobody will confuse it with a soft drink. The problem is the name association. If people begin to associate names with multiple different products, then it cheapens the name for the company that owns it, who wants their product to be distinctive. If one company can get away with it, anyone can and there's no protection.
(Fun fact, there's a coffee shop in Bethlehem called "Stars and Bucks" which looks very much like some other company's design. they get away with it because the law is very confusing and hard to enforce in occupied Palestine).
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Re: Re: moron in a hurry
"Trademark is, first and foremost, a consumer protection mechanism."
"The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin"
https://en.wikipedia.org/wiki/Trademark#History
Please explain how your example(s) demonstrate the veracity of your claims that the prior poster is incorrect.
Is this really about "cheapening" of a name or is it about something completely different?
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'Well, I mean, they're stupid enough to eat our burgers...'
“McDonald’s is concerned that your restaurant’s use of Effing Filet O’ Fish, particularly in association with a sandwich or burger menu item, is likely to cause confusion among consumers and is also likely to diminish and dilute the strength of McDonald’s trademark,” the letter read.
Gotta love it when a company sends out a message like this telling someone how monumentally stupid they think their customers are. Really helps drive home how little they think of the people that give them money when they argue that those people would be confused into thinking that one store is another simply because of similar names of one of the products.
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Priceless
McEffing Fish Filet
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Fish have a tenderloin?
Like a wild e-beest, I learn something gnu everyday.
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Re:
Tenderloins get ripped out of fish that are more commonly known as the gonads! I don't eat fish gonads and neither does the whole Alaskan fishing fleet!
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McDonald's should hit Woodshed Burgers where it counts...
Now, if McDonald's made a decent poutine, then maybe I'd go....
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Re: McDonald's should hit Woodshed Burgers where it counts...
Oh dude that sounds gnarly.
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