Last week, Taco Bell released a TV commercial featuring real men named Ronald McDonald enjoying Taco Bell’s new breakfast items. This is very creative advertising, but is not for the faint of heart. Using a competitor’s trademarks is always a risky business. Do not try this at home. At least not without calling your trademark lawyer first.
As we have reported previously on this blog, character names and likenesses can be protected by trademark and copyright law. In this case, Taco Bell deliberately chose to advertise its products featuring real men named Ronald McDonald in a playful dig at its burger franchise competitor. Taco Bell was careful not to do anything to suggest that any of these men were the “real” Ronald MacDonald, and in fact included the disclaimer: “These Ronald McDonalds are not affiliated with McDonald’s Corporation and were individually selected as paid endorsers of Taco Bell Breakfast, but man, they sure did love it.”
When a company uses a brand name of its competitor in its own advertising, such as in comparative advertisements, courts will often apply the doctrine of nominative fair use in determining whether there is a violation of trademark rights. The nominative fair use doctrine generally considers three factors: (1) whether the company had a need to use the trademark of its competitor in order to identify the competing product; (2) whether the company went beyond the use of the trademark to the extent necessary to make the identification, such as by using the associated trade dress or images; and (3) whether the company did anything else to suggest that there was endorsement by or affiliation with the competitor.
In this case, none of the “Ronald McDonalds” in the Taco Bell commercials wore the familiar make up or costumes of the McDonalds character, and Taco Bell went out of its way to include a disclaimer. On the other hand, did Taco Bell really “need” to refer to Ronald McDonald in order to make its point? It is an interesting question. We may never know how the nominative fair use factors would apply to this unusual fact pattern, as McDonalds has not brought an action for trademark infringement or dilution and seems unlikely to do so. The McDonald’s Facebook page shows the “real” Ronald McDonald petting a Chihuahua – the Taco Bell mascot — and observes that “Imitation is the sincerest form of flattery.”