Rob Lammle
6 David & Goliath Trademark Disputes
by Rob Lammle - December 9, 2009 - 3:55 PM

Every businessperson would agree that trademark infringement is a serious issue. But when a multi-million dollar corporation goes after a mom-and-pop store, you can’t help but root for the underdog. Most of the time, David doesn’t stand a chance against a Goliath of the industry, but here are a handful of cases where the little guy fought back and didn’t end up empty-handed. And sometimes, against all odds, he even wins.

1. Microsoft v. MikeRoweSoft

microsoftAt 17 years old, Michael Rowe started his own website design company. Looking for a catchy name for the business, he decided to create a parody of computer software giant Microsoft using a variation of his own name. Rowe purchased the URL mikerowesoft.com.


The Bill Gates empire caught wind of the site and threatened to sue for trademark infringement. To avoid litigation, they graciously offered Rowe $10 to reimburse the expenses incurred in buying the web address. When the story started hitting online news sources, the outcry from average web surfers was intense. A defense fund was set up in Rowe’s name and people donated around $6,000 to help him fight the power.

After the online commotion died down, Rowe began to realize just how much was at stake if he saw this case through. His measly $6,000 was nothing compared to the billions Microsoft had at its disposal. And should he lose, Rowe would be responsible for the court costs of a team of Microsoft lawyers, a fee he’d be struggling to pay for the rest of his life. He began to wonder if he should just take his $10 and throw in the towel.

However, the bad press Microsoft received was enough to make them sweeten the deal. In the end, Rowe handed over the website in exchange for Microsoft Certification training, a trip for his family to a tech conference in Redmond, Washington, assistance to set up a new website, and an Xbox videogame system.

2. Burger King v. Burger King

burger-kingBack in the early 1950s, Gene and Betty Hoots bought the Frigid Queen ice cream stand in Mattoon, Illinois. A few years later, they expanded to a new building, where they sold burgers and fries. When looking for a name for this new venture, it was suggested that a queen needs a king, so they called the business “Burger King.” They registered the name with the State of Illinois in 1959, giving them exclusive rights to the moniker in the Land of Lincoln.

However, there was another Burger King you might have heard of that was busy building three dozen burger joints all across the South. Thanks to this success, they expanded into the Midwest and, in 1961, opened a restaurant in Skokie, Illinois, followed shortly by another in Champaign, Illinois, just an hour north of Mattoon. By 1967, Burger King Corporation had opened 50 locations across the state.

After years of legal back-and-forth between the companies, Gene and Betty Hoots finally sued the Burger King Corporation in an effort to stop them from using the name Burger King in Illinois. However, because the Home of the Whopper was by then a nationwide chain, the corporate giant was allowed to keep the name.

But that didn’t mean the Hootses had to change the signs on their building. The courts ruled that they owned the exclusive rights to the name Burger King within their business region, legally defined as a 20-mile radius around town. To this day, if the other Burger King wants to open a location there, they have to pay the Hootses to use the name.

3. The North Face v. The South Butt

winkelmann_southbuttA few years ago, while walking the halls of his St. Louis-area high school, Jimmy Winkelmann noticed a disturbing trend—every kid in his class was wearing the same fleece jackets from popular clothing company The North Face. Frustrated by their conformity, Jimmy came up with a parody clothing line, The South Butt, and began selling sweatshirts out of a local drugstore. Whereas The North Face’s logo is an abstract drawing of Half Dome, the famous granite feature at Yosemite Park, The South Butt’s logo is based on the famous feature we all have. And while North Face’s ads suggest you “Never Stop Exploring,” the South Butt encourages you to instead “Never Stop Relaxing.”

While some might think Winkelmann’s idea is good for a laugh, not everyone finds it so funny. In August 2009, The North Face sent The South Butt a cease and desist letter in an attempt to stop the parody clothes from being produced. Undeterred, Winkelmann and his lawyer are planning to file for a declaratory judgment, which they hope will give them the right to move forward and get The South Butt products into retail stores in time for Spring.

The actions taken by The North Face have actually drawn more attention to The South Butt and its website, thesouthbutt.com. During the first few years he was in business, Winkelmann sold a total of around two hundred pieces of South Butt merchandise. Thanks to The North Face, though, sales for this November alone have reached over $100,000.

4, 5 & 6. McDonald’s v. McEverybody

If you want to use the name Mc-anything for your business, think again. There’s a good chance Ronald and his lawyers will be on you like barbecue sauce on a McNugget. Here are just a few of the many trademark infringement cases McDonald’s has brought against small businesses that dared use some variation of “Mc” in their name:

• Back in 1996, if you were looking for a quick lunch in Buckinghamshire, England, you might have stopped at Mary Blair’s McMunchies, a small corner deli whose name combined slang for snack food and the owner’s Scottish heritage. McDonald’s threatened to sue her, saying the “Mc” prefix was a registered trademark. To the rescue came Lord Godfrey MacDonald, head of the MacDonald Clan of Scotland, who started a campaign against the corporation’s harassment of businesses using the Mc prefix. McDonald’s received enough bad press that they eventually dropped the case against McMunchies as well as many other small McBusinesses in the UK.

• Danish business owner Allan Pedersen tried MacAllan whiskey while visiting Scotland. He liked it so much he decided to name his hot dog shop after it and even got permission from the distillery to do so. McDonald’s, though, felt the name was a little too similar to their own, so they sued. After repeated trials and appeals, the case wound up in Denmark’s Supreme Court, which ruled that Pedersen could keep the name, citing that no one would mistake the one-man hot dog shop with a multi-national hamburger franchise.

mccurry2• In 2001, an Indian restaurant in Malaysia opened, calling itself McCurry. The owners said they chose the name as an acronym of sorts for one of their signature dishes, Malaysian Chicken Curry. Shortly after, McDonald’s sued, citing not only the Mc-name, but also that the restaurant’s red sign with white block lettering was a little too close for comfort. After eight years in court, in September 2009, the Malaysian Court of Appeal declared that the two businesses were diverse enough that customers would not confuse them, allowing McCurry to keep its name. Now that the owners of McCurry’s have won their case, they’re thinking about starting up a franchise.

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Comments (44)

  1. the south butt thing is totally ridiculous, i hate it when big companies try to impose their will, and now we cant put “Mc” in front of anything, soon mcdonalds will sue you for having the last name mcdonald.

    posted by Crow88 on 12-9-2009 at 1:41 pm

  2. When I was a kid there was a Chinese restaurant close to our house called McChina. And then one day the name mysteriously changed to MbChina. To throw Ronald off the scent, obviously.

    posted by Rachel on 12-9-2009 at 2:07 pm

  3. There are is a company that is called Monster Cables. They sell (overpriced – imho) cables for your tv and stereos. They have sued sandwich carts, mini golf courses, and other business that have Monster in their name. Most of the sued business give up due to the cost of litigation. You can learn more about Monster’s practices here: http://consumerist.com/company/monster-cable/

    posted by iambeaker on 12-9-2009 at 2:20 pm

  4. Did McDonald’s honestly think the one man hot dog shop would confuse people into thinking it was one of their crappy fast food joints?
    Can they really trademark two letters like that when they don’t even stand alone?

    posted by Kels on 12-9-2009 at 2:34 pm

  5. In Calgary, AB we have a “Barbies Shop” which has been sued by Mattel a few times.

    “if you’re born with a name you can use it for a place of business” Barbies Shop owner, Barbie Anderson-Walley.

    Did I mention it’s a bondage/fetish store? Hehehe

    http://money.cnn.com/2005/07/21/news/newsmakers/barbie/index.htm

    posted by Sarah on 12-9-2009 at 2:46 pm

  6. That MikeRoweSoft kid got a good deal. The other corporations can just “suck it” as I used to say as a kid. Especially McDonald’s and the company iambeaker mentioned (love your name btw).

    posted by Barbara on 12-9-2009 at 2:55 pm

  7. McDonalds went after a local car wash here, MicSuds, which opened up next to our McDs.
    The little guy won, because MIC was the owner’s initials.
    Ironically, the car wash was owned by the McDonalds franchise owners too, and they still got sued.

    posted by Bucephalus on 12-9-2009 at 2:56 pm

  8. In Australia, Burger King trades as Hungry Jack’s, because when they opened their first outlet, there was this small chain of hamburger shops in Perth that already owned the name.

    PS recaptcha = Balti dahl. I’m hungry already.

    posted by Jess on 12-9-2009 at 2:59 pm

  9. That Mike Rowe guy knew exactly what he was doing. A rare case where I would side with the Microsoft Corporation. He got WAYYYY too much compensation.

    posted by rat on 12-9-2009 at 2:59 pm

  10. Not to be “that guy” but the conference that Mike Rowe went to was in Redmond, WA, which is where M$ is based. Lived across the street from them for 2 years.

    posted by Ian on 12-9-2009 at 3:04 pm

  11. How about this one? In Newburgh, NY there is a diner that WAS called the Lexus Diner. Was called that for YEARS. Well Lexus the car maker had a sh*t fit one day out of the blue and threatened to sue this Mom and Pop diner to change their name. Hence the diner is now called the ALEXIS Diner. How stupid is that? Like anyone can mistake a restaurant called THE LEXUS DINER with a car maker. So stupid. Still ticks me off to this day.

    posted by Stacy on 12-9-2009 at 3:16 pm

  12. re: Monster Cables–the fine defense would only need to bring up monster.com & monster energy drink. If the cable company didn’t go after those nationally known companies, they should have no problem with a “little guy”.

    recaptcha: Mary dolt (yeah, I never thought much of Mary either)

    posted by Wayne on 12-9-2009 at 3:19 pm

  13. Here’s another one I thought was really silly. There’s a home improvement/DIY/decorating personal blog I read that’s gotten popular. The couple who runs it is named ‘Young’ and so they originally called the site ‘This Young House’ and it tells about their adventures with their first home. They started getting popular, though, and got asked by ‘This Old House’ to stop using the name. Here’s their post about it:
    http://www.younghouselove.com/2009/07/the-end-of-this-young-house/

    posted by Erin on 12-9-2009 at 3:26 pm

  14. How about the Vancouver Olympic Committee vs anyone with Olympia or Olympic in their name? They had cease and desist orders against a medical company with Olympic in it’s name, and a place called Olympia Pizza. I assume that there was no resolution to either cases and it all just faded into the woodwork.

    posted by Martin on 12-9-2009 at 3:29 pm

  15. @ Wayne, re: Monster Cable

    They did.

    posted by Sam on 12-9-2009 at 3:37 pm

  16. Nissan.com is another good example of this… check it out

    posted by pete on 12-9-2009 at 3:58 pm

  17. It’s not quite the same thing, but the owners of the website Nissan.com are not, in fact, the Nissan Motor Company. It’s actually owned by Uzi Nissan, who has been sued by the company, purportedly for squatting on the domain even though it’s his name:

    http://freakonomics.blogs.nytimes.com/2007/11/27/the-internets-greatest-coase-theorem-violation-nissancom/

    posted by ESJ on 12-9-2009 at 4:10 pm

  18. We have a coffee shop in Tulsa that is named DoubleShot. Starbucks tried preventing them from using it but the local coffee shop won since you can’t trademark a unit of measure.

    posted by Jared on 12-9-2009 at 4:10 pm

  19. Oops, I loaded the page before Pete had posted his comment…oh well, I may have lost the scoop, but that article on the Freakonomics blog is interesting regardless.

    posted by ESJ on 12-9-2009 at 4:14 pm

  20. On Haida Gwaii (the Queen Charlotte Islands, off the west coast of British Columbia) a couple of native Haida entrepreneurs opened a cafe in a tiny village and called it Haida Bucks.

    They said it was their way of taking back the word “bucks,” considered a perjorative term for aboriginal men, but it was pretty obviously also a play on the name Starbucks.

    Guess who sued the hell out of them?

    posted by Kikadee on 12-9-2009 at 4:18 pm

  21. In Chattanooga, TN, there is a bar called Mayo’s that used to be Mayo’s Clinic. Whoever made them change that is soulless and has no sense of humor. Obviously noone is going to mistake a Tennessee bar for a Minnesota hospital.

    Just south of Chattanooga, there is a shoe store called Sear’s. I think that all legal wrangling over that was already over and done with long before I came along.

    posted by Dave on 12-9-2009 at 4:19 pm

  22. I wonder if you opened a place called McDreamy’s.. would you get sued by both McD’s and ABC? :)

    posted by xoxhaylee on 12-9-2009 at 4:48 pm

  23. The last one is pushing it, but seriously the rest are ridiculous. Wouldn’t South Butt be covered under some sort of parody exception?

    posted by Nicole on 12-9-2009 at 5:00 pm

  24. There was a bar here in Toronto called the Betty Ford, they got sued by the clinic and had to shorten it to “Betty’s.”

    Also, I heard about Jeep suing some family years ago who had an establishment called “Jeep’s.” (Can’t remember what kind.) It was the guy’s nickname and his mom produced a photo with “Jeep, Xmas 1940″ (or something) written on the back which proved his nickname pre-dated the incorporation of the car company. The lawsuit was thrown out.

    posted by Siobhan on 12-9-2009 at 5:13 pm

  25. I used to go to the Mattoon, Illinois, Burger King as a kid, and it had the greatest burgers and fries, as well as soft serve ice cream to which they added candy eyes and a mouth.

    posted by Ryan on 12-9-2009 at 5:39 pm

  26. In Central MA, there’s a soft drink company called Polar Beverages, which has used a polar bear in their advertising and logo since at least the early 1900′s. When Coca Cola began their advertising campaign using polar bears, Polar sued … of course they never stood a chance again Coke.

    posted by CB Davis on 12-9-2009 at 5:51 pm

  27. ok, McLammle..sue me..I am broke anyway…he, he, :)

    posted by ferrell on 12-9-2009 at 7:50 pm

  28. In 2003, a Galveston, TX bar owner named Rex Bell started selling a beer named Star Bock. Starbucks Coffee went after him, citing copyright infringement. The courts ruled that Bell can sell Star Bock locally, but not anywhere else.

    I have to side with Starbucks. This sounds like Bell was trying to ride Starbucks’s coattails.

    http://www.galvnews.com/story.lasso?ewcd=cac577be4006cdc8

    posted by Michael Doty on 12-10-2009 at 12:13 am

  29. I’m tempted to open a fast food joint called The North MicroMcKentuckybuck King and see what happens!

    posted by Professor on 12-10-2009 at 12:21 am

  30. You missed the Amazon bookstore battle.

    posted by macahi on 12-10-2009 at 3:48 am

  31. Does no one else see the irony in the South Butt story? He was sick of conformity, so he started up a label that is now selling wildly to lots of people…? Anyone?

    As for people naming stuff after famous products, I think they are just asking for trouble. Clearly the name is trademarked, and if you are making a profit off a very well-copied parody, you are counting on the popularity of the original product to earn money. That is a problem – it’s not about the “big guy” versus the “little guy”. All the ‘big guy’ companies started small at one point.

    posted by Logan on 12-10-2009 at 4:59 am

  32. One of the key reasons Waffle House hasn’t expanded further north into Michigan and Illinois (and the reason they’re called “Waffle & Steak” in Indiana is because of a small chain called “Waffle House of America” that still runs in Michigan, Indiana, Illinois, and perhaps a couple other northern states.

    From what I’ve heard, they’ve been trying for years to gain rights to the name in those states, with no success.

    posted by Sandy Wood on 12-10-2009 at 8:29 am

  33. Right on Logan! These huge companies do not wan’t their name sullied by some hack who is taking advantage of the hard work they have done in the past.

    There are certainly lots of instances where they may seem a little over the top, but you have to protect your good name.

    Any examples of the thousands of time where McDonalds, Starbucks, Wal-Mart had ligitimate law suits?

    posted by graham on 12-10-2009 at 9:13 am

  34. I used to live within 10 miles of that damn Burger King and my hometown (EIU) still doesn’t have a regular Burger King. The food in the Mattoon one is pretty tasty (think truck-stop diner food). It’s kind of a hole in the wall. I just remember the owner would call out your number over a microphone in this annoying nasally voice. It was pretty funny.

    posted by Nick on 12-10-2009 at 11:06 am

  35. http://www.youtube.com/watch?v=kbG_woqXTeg

    This guy in Vermont owned his own small brewery and for Halloween invented The Vermonster (clever) and the Monster Energy Drink idiots sued him. It’s not settled, but since they don’t make alcohol, I don’t see how they can be justified in suing him. The guys lawyers say they can’t win, but could easily bankrupt him by continually appealling if they lose. Boycott Monster Energy Drinks. (They’re horrible for you anyway.)

    posted by Nick on 12-10-2009 at 11:13 am

  36. @Stacy-I’m from Newburgh, and I remember that suit. So ridiculous. Not that it matters, I still call it the Lexus whenever I go home, as do most people I know.

    posted by Kate on 12-10-2009 at 2:17 pm

  37. One from Canada:
    When Walmart opened up shop here in Ottawa, it was met with some resistance, but the prices won out. Until the giant discovered a little shop in Perth (about 20 minutes from Ottawa) called Woolmart. Walmart sued saying the name was too close. The Perth Woolmart had been open since the early 80s, before any Canadian had heard of ol’ Wally World. So when she got sued, Woolmart countersued claiming that Walmart is going to confuse everyone in Perth and knitters all over the Valley. You could hear the collective ‘oh crap’ from Walmart Canada executives, and the matter was very quickly swept under the rug with a LARGE cash settlement going to Woolmart.

    posted by 24Slashing on 12-10-2009 at 2:52 pm

  38. In Half Moon Bay, CA, a small coffee shop’s name, McCoffee, was laid to rest after the Clown went after them. Now it’s M Coffee, ala “M Butterfly”, I guess.

    posted by JohnHo on 12-10-2009 at 3:07 pm

  39. Another horrible example of David & Goliath trademark battles, is Entrepreneur magazine’s attacks against small entrepreneurs that use the word entrepreneur in their business names. Yes, Entrepreneur mag is actually suing its target audience for using the generic word entrepreneur while simultaneously encouraging widespread use of the word entrepreneur! Believe it or not, Entrepreneur magazine claims to own ALL rights to ALL versions of the word entrepreneur! (search the Web for numerous articles about Entrepreneur mag’s highly controversial trademark disputes). Unfortunately, most people – including those that use and profit off the word entrepreneur and/or market themselves as being strong supporters of entrepreneurs – have been too afraid or apathetic to stand up to Entrepreneur magazine’s efforts to monopolize the word entrepreneur. (Note: I will soon be launching BrandLarceny.com, a website devoted to exposing and stopping brand name bullies such as Entrepreneur magazine)

    posted by BizStarz on 12-10-2009 at 4:34 pm

  40. A friend of mine started a wedding video business, and called it “Mount Olympus Wedding Video”, named after the peak in Salt Lake City. So Disney sued him, because _nothing_ was ever called that until their “Hercules” movie was released. The judge apparently laughed Disney’s lawyers out.

    posted by Me on 12-11-2009 at 1:18 am

  41. http://www.nissan.com – a man who’s name is Nissan running a computer-related company trademarked the name in the 80s back when Nissan the car company was Datsun

    lots of legal battles and Nissan the car company trademarking computer related items to block Nissan the man from expanding his business

    posted by Katie on 12-11-2009 at 10:22 pm

  42. . Small Business owners are largely forgotten. Thats why I only focus on them. I have experience several members of my family file bankruptcy due to small business failures. I also I suffered through 2 destroyed businesses due to failure however, in my failings I have learned some of the secrets to success. (Who can say they know it all?)
    What I like about small business owners is that they are not afraid to take huge risks and lay it all on the line. But, I agree they do need a lot of help with their marketing. I think having them go the social media and email route is not only the least expensive but its also the most effective. Thanks for the stats!
    onlileuniversalwork

    posted by henrylow on 12-17-2009 at 12:51 am

  43. way back in the PHILIPPINES

    McDonald Philippines sue a local burger stand for naming their store “BIG MAK”

    While Big Mak Burger also uses red arches as part of its branding, similar to McDonald’s golden arches, the company did not pursue legal action on this matter.

    Big Mak Burger operates a number of small fast food outlets and takeaway vans in central Manilla.

    posted by fox_hunter on 12-23-2009 at 12:31 pm

  44. Erin “Here’s another one I thought was really silly. There’s a home improvement/DIY/decorating personal blog I read that’s gotten popular. The couple who runs it is named ‘Young’ and so they originally called the site ‘This Young House’ and it tells about their adventures with their first home. They started getting popular, though, and got asked by ‘This Old House’ to stop using the name. Here’s their post about it:
    http://www.younghouselove.com/2009/07/the-end-of-this-young-house/”
    I heard about the young house love controversy hadn’t though about that one since I saw http://www.garagesalestacker.com talking about working with them and saw them on wikipedia for that ordeal they had to deal with.

    posted by David on 2-16-2010 at 4:36 pm

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