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.

Filed Under: canada, effing filet o fish, filet o fish, likelihood of confusion, mceffing fish filet, paul shufeit, trademark
Companies: mcdonald's, woodshed burgers


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  1. icon
    That One Guy (profile), 24 Oct 2019 @ 1:26am

    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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