Allison Arevalo and Erin Wade thought "Little Mac" would be the perfect moniker for their hip new Oakland restaurant. After all, the two women planned to cook up mac-n-cheese made from locally grown, sustainable ingredients. But then lawyers for McDonald's claimed the two East Bay women were infringing on the trademark owned by the world's largest fast-food chain. Now, Arevalo and Wade are scrambling to come up with a new brand identity before their eatery opens this fall.
The women must create a new logo and purchase a new web domain. They also can't apply for a liquor license, a critical source of income for any restaurant, until they devise a replacement for Little Mac. "Each day we lose to get the license, we will lose financially," Arevalo said in an interview.
Wade said that when McDonald's attorneys told them that the fast-food chain "had big problems" with their choice of Little Mac, it made "her heart drop." The bad news arrived as they were cooking 45 pounds of pasta and melting mounds of cheese for their launch at the SF Underground Farmers Market earlier this month. Nameless for their debut, the business missed out on an important marketing opportunity, Arevalo said.
Wade said the fast food chain's senior intellectual property counsel, Jennifer O'Malley, told her the company was concerned about brand dilution — that another store's use of the word "mac" might devalue the McDonald's brand. The company also was worried about brand confusion — that the public could mix up the two stores and their products. But to Arevalo and Wade the concerns seemed unfounded. "Our focus is hyper-local everything," Wade explained. "Our venture couldn't be further from McDonald's."
But Arevalo and Wade were afraid of potential problems with McDonald's down the road — such as a lawsuit that would bankrupt the women even if they ultimately prevailed. So they decided to ditch Little Mac altogether. "When they say, 'We would have a big problem with that, being that you're a restaurant,' you know, really read between the lines," Wade said. "What does it mean for McDonald's to have a problem with it? It doesn't mean that they sit at their desk and think about it and get angry."
Arevalo and Wade had hatched their plan for a comfort food eatery while sharing a table at Bittersweet, a crowded North Oakland coffee and gourmet chocolate cafe. They decided to ditch their corporate jobs to realize their dreams of opening a restaurant. They considered a long list of names, including Melt and Extra Sharp, before choosing Little Mac. It wasn't just that they really liked the name. Little Mac would have embodied the small community feel they wanted for their restaurant and the small carbon footprint it will leave.
At the outset of forming their business, the women sought counsel from a small business attorney, Bob Buchanan. Admittedly not an intellectual property lawyer, but experienced with at least one lawsuit over a business name, Buchanan advised the women that it was unlikely that a customer would walk into their store and mistake it for a McDonald's, Wade said.
But Wade, a non-practicing lawyer who prefers the kitchen to the courtroom, decided to call McDonald's herself. Wade said she finally spoke with O'Malley, after jumping through hoops to reach her, and O'Malley said she understood that the women intended "mac" to refer to mac-n-cheese but that her job was to protect the interests of the McDonald's stockholders.
Wade said she understood from a legal perspective why McDonald's would have no reason to "give their blessing" to the use of Little Mac. But she didn't expect to be discouraged from using "mac" entirely. "I thought the worse-case scenario was that we would have to tweak 'little.' Even though I disagree, I could see how someone could make the argument that Little Mac-Big Mac is too close an association," Wade said. "But we can't have 'M-A-C' at all or they're going to have an issue? That's insane."
McDonald's officials did not respond to phone calls seeking comment for this story. But even Buchanan, briefly the women's lawyer, now says McDonald's could potentially have made a valid legal case against them. "One's trademark rights are only as strong as the steps you take to protect it," Buchanan said in an interview. "If a mark is used so commonly that it really loses its value as an identification of a good or service of a company, it can fall prey to genericide — the death of a brand name."
For Arevalo and Wade, the top priority in the coming weeks is to come up with a name that fits their mac-n-cheese restaurant's small, local identity. It promises to be a challenge. "How do we name our restaurant so that people know we do mac-n-cheese without having 'mac' in the title?" Arevalo wondered. "I guess we could do something like 'Elbows.' But it's really not as catchy."
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