double double – Techdirt (original) (raw)

In-N-Out Bullies Local Sports Bar Into Poke-N-The-Eye Menu Item Name Changes

from the how-is-that-better? dept

We’ve talked a great deal about the trademark adventurism of famed burger chain In-N-Out. While In-N-Out has shown itself to be a happy trademark bully in several ways, most of our posts on the company have to do with the trademark tourism it engages in. This is the process by which the company puts up a popup restaurant once every couple of years in countries where it otherwise has no presence, purely so that it can retain registered trademarks in those countries to keep anyone else from using a similar name.

This isn’t one of those cases. Instead, this is more of the straight up trademark bullying scenario, in which In-N-Out wields questionable trademarks to bully other local businesses out of using the same or similar terms to what is trademarked. Fair Play is the name of a sports bar in San Diego and it had on its menu two items: “Animal Fries” and a “Double-Double.” Both are trademarked terms owned by In-N-Out, with the former being for fries topped by cheese, onions, and dressing, while the latter is for a burger that has 2 patties and two slices of cheese. “Animal Fries” is a term that is at least somewhat fanciful, though I would argue it is still very simplistic. “Double-Double,” on the other hand, is at least partially descriptive, as it refers to the number of two ingredients in the burger.

Regardless, Fair Play received a cease and desist notice from In-N-Out and reacted roughly as you would expect. First came the irritation over having received the notice in the first place:

‘Cease & Desist what you’re doing right now, you’ve gotta see this,’ Fairplay wrote in a social media post on National Cheeseburger Day along with a photo of the redacted letter. ‘We’ve officially been recognized by Big Burger!’

In the letter, the chain reminded Fairplay that it owned ‘multiple federal and state registrations’ for the use of the words ‘animal’ and ‘double-double’ in relation to ‘burgers and restaurant services.’

Note that In-N-Out somehow got the USPTO to grant it a trademark for restaurant services for the single term “animal”. That’s fairly odd, considering part of what In-N-Out is selling is cooked, well, animal. That sure seems entirely too generic to be deserving of a trademark.

But thanks to the USPTO granting that and the arguably descriptive “double-double” mark, In-N-Out is able to bully smaller entities in this way. And since trademark bullying tends to work due to the mismatch in legal war chests, Fair Play has agreed to change the names of these two menu items. Although perhaps not in the way that In-N-Out would have wanted.

In compliance with the letter, the restaurant did change the name of the menu items, but not before poking fun at In-N-Out’s non-trademarked phrases, including renaming their animal fries to ‘Secret Menu Fries,’ which retail for 12and12 and 12and28, depending on size.

They renamed the sandwich to ‘Burger Burger,’ which costs $16, according to its new menu.

“Burger Burger” is just inherently funny, but the real prize goes to “Secret Menu Fries.” In-N-Out is quite famous for having it’s absolutely not secret “secret menu” where you can order items that aren’t listed out for you. In fact, In-N-Out has some measure of fame for this practice. But it doesn’t have a trademark on the term, because that would be plainly too generic and/or descriptive to be deserving of a mark. And so now we have “Secret Menu Fries” at Fair Play as a result.

Look, it’s nice to see victims of trademark bullying having some fun with all of this, but in the end this is all still very annoying. Nobody is walking into Fair Play thinking that the double-double that was on the menu somehow meant there was some affiliation with In-N-Out. And the point of trademark law is to avoid that very sort of confusion.

Which means in this case that In-N-Out, once again, is just being a trademark bully.

Filed Under: animal fries, double double, trademark
Companies: fair play, in-n-out

In-N-Out Trademark Tourism Allows It To Keep Mark For ‘Double-Double’ In Canada

from the double-double-trademark-abuse dept

In-N-Out is In-N-At it again. In our many posts on the burger chain, we’ve discussed the company’s habit of what I’ll call trademark tourism. In posts that have focused primarily on its trademarks in Australia, we’ve detailed out how In-N-Out will conduct a popup restaurant in these countries that it otherwise has zero brick and mortar presence in, usually once a year or so, simply to satisfy the use-in-commerce requirements to retain its registered trademarks. This allows the company to lock up language and branding in a country it refuses to operate in generally, other than these bullshit events designed solely to allow it to keep these trademarks active and registered.

It should be obvious to everyone that this sucks. It wasn’t the point of trademark laws in general and it’s a naked attempt to game the system on a technicality. But In-N-Out keeps getting away with it, and not just in Australia.

Way back in 2019, Tim Horton’s asked asked Canada’s trademark office to review the trademark In-N-Out has for “double-double,” the chain’s famous burger order. As in Australia, In-N-Out has no permanent storefronts in Canada. But, just as in Australia, the company shows up with its popup trucks every once in a while to keep its registered mark.

In 2019, Tim Hortons Canadian IP Holdings Corporation requested a review of In-N-Out’s ownership of the trademark. If a company holds a trademark, but cannot show that it has been used over the last three years, the trademark can be expunged, leaving the word or phrase free game for another user to register. But the Canadian Intellectual Property Office decided that In-N-Out Burger had been actively using the trademark, because of the company’s annual burger sales at the Langley Good Times Cruise-In.

“In addition to using its cookout trucks in certain locations in the United States, the owner [In-N-Out Burger] has also used its cookout trucks to sell food products in Canada for many years,” wrote Timothy Stevenson, a member of the Trademarks Opposition Board, in a Nov. 1 ruling.

There’s a reason Tim Horton’s has an interest in this particular trademark. In Canada, a double-double is best known as a coffee order with two creams and two sugars.

Now, Tim Horton’s probably doesn’t want to risk a trademark infringement suit from In-N-Out, especially when the latter doesn’t even truly operate within the country other than this one event it does. An event in which In-N-Out makes no profit, by the way. The company covers its own costs and then the rest goes to charity. There’s nothing wrong with that, obviously, but I’m driving the point here that In-N-Out isn’t clinging to this trademark because it wants to do business in Canada. It clearly doesn’t.

The annual burger sale is not for profit. It covers its costs, and then any money above that goes to the Cruise-In Society, which distributes the cash to local charitable causes.

But according to the trademark office, that doesn’t matter. All that In-N-Out needs to do is participate in this charity event once every three years and it gets to keep its trademark.

Again, that isn’t what trademark laws are designed for. The public is very much not being served by allowing the company to retain the mark. For 364 days a year, there’s no public confusion even possible in Canada.

Trademark tourism of this kind simply shouldn’t be allowed, full stop.

Filed Under: canada, double double, popups, trademark, trademark tourism
Companies: in-n-out, tim hortons