In & Out Infringement

Posted by | January 25, 2012 | Disputes, General | 9 Comments

 

How on Earth did we manage before God invented Google alerts?  Google alerts are an awesome thing.  They provide me daily links to relevant news about intellectual property and other topics in which I am interested and they help me identify new sources for information (TMZ, anyone?).

For example, a trademark infringement alert that I received earlier this week came from the Law Firm Chronicle, an “online publication made up of content contributions from lawyers and law firms around the country,” about which I previously was unaware.  The article was entitled, Two Burger Restaurants Battle Over Signage in Trademark Infringement Case and covers a lawsuit recently filed by In-n-Out Burger against Pappas Restaurants for trademark infringement and unfair competition.  According to the article, In-n-Out claims that Pappas’ use of a “yellow boomerang arrow” in connection with its 3 restaurants located in Texas infringes on In-n-Out’s logo, which it uses on 260 restaurants in California, Nevada, Arizona and Texas.

Um, what?  Really?

A finding of infringement requires that consumer confusion as to source or origin is likely.  Most courts use a test similar to the DuPont factors to analyze infringement.  The factors examined to determine whether consumer confusion is likely include:

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(1) Similarity of marks and overall commercial impression (sight, sound & meaning trilogy)

(2) Relatedness of goods/services

(3) Similarity of channels of trade

(4) Impulse purchase v considered purchase

(5) Fame of the prior mark

(6) Number and nature of similar marks for similar goods/services

(7) Nature and extent of any actual confusion.

(8) Concurrent use without actual confusion

(9) Variety of goods on which a mark is used

(10) Market interaction between prior (1st) and junior trademark user

(11) Extent of exclusive rights of prior user

(12) Extent of potential confusion

(13) Any other established probative fact

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These marks just don’t seem very similar to me, yellow arrow aside.  All the trademark registrations asserted in In-n-Out’s lawsuit (1,646,401 and 1,031,096 & 1,516,560) are for this arrow (which Pappas’ arrow logo looks nothing like, at least to me):

In-n-Out first left a bad taste in my mouth when it alleged dilution against (what once was known as) In & Out Car Wash 6 months after the burger joint moved into Northern Nevada — 18 years after the car wash began operating here.  (Revealed under authority of settlement agreement.)  That case settled but I never found the love for In-n-Out that others have.  Looking at the Pappas and In-n-Out logos above, do you think consumers will be confused into thinking that Pappas and In-n-Out are related or that In-n-Out authorized Pappas’ use of the yellow arrow in Pappas logo?  I really want to know what others think about this case and why, so please share your comments below.

My mom used to say “never put anything in print you wouldn’t want to see on the front page of the Cleveland Plain Dealer” (which made sense to a kid growing up in Shaker Heights).  The same goes for sending C&D letters and filing lawsuits, the ramifications from which extend far beyond the legal department.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

9 Comments

  • Thanks for interpretation & comment on my post. Not sure how the burger bully justifies its events internally or outwardly.
    maybe the later is something about which it just doesn’t care.

    • Lara says:

      Sadly, I think it has no incentive to care so as long as people are still lining up around the block to buy its burgers. Bully burger bummer!!!

  • Additional than they are both yellow, the arrows are completely naught similar, no one could perhaps perplex them … even Ray Charles could observe that!! In-n-Out burgers set out after In & Out Car Wash 6 months following the burger joint budge to No. Nevada and 18 era subsequent to the pulley wash begin working here! What division of extreme is that on their division and of their lawyer?? This sounds like mature make hounding and illustrate that the burger joint isn’t the brightest approximately. similar to you, I have never understand the draw to the consign.

    • Lara says:

      Thanks for reading & commenting on my post. Not sure how the burger bully justifies its actions internally or externally.
      Perhaps the later is something about which it just doesn’t care.

  • coco says:

    Ok, question about the In-And-Out issue: As a designer, I could probably find you at least a dozen retro art-deco signs (mostly lining the ruins of Route 66) that use this same arrow style. Its sort of an already-established convention of the roadside eatery. Where does that kind of precedent fall as far as the law is concerned?

    • Lara says:

      Thanks so much for reading and commenting on my post. Generally speaking for purposes of infringement analysis trademark rights exist only in relation to use of a mark on or in connection with specific goods and services. Thus, prior, discontinued use of similar yellow arrows doesn’t have much, if any, bearing on In-n-Out’s rights. That said, I bet anyone with time on their hands could find uses of similar yellow arrows for burger joints all across the country.

  • Tina Bondy says:

    I think this is completely overreaching and downright ridiculous. It is clearly showing (once again) In-n-Out’s propensity for being a giant bully.
    In addition to your mother’s advice, what about the “straight face” test? How can they actually make this argument with a straight face?
    I really hope that Pappa’s Burger will fight this and at least make In-n-Out pause before attacking the next burger shop that dares to use a yellow arrow in it’s signage, or the next car wash that uses “n” to abbreviate the word “and”.

    For the record though, love their burgers and shakes.

    • Lara says:

      Thanks for reading and commenting on my post, Tina! Good point about the “straight face” test (something I often wondered when resolving the dispute on behalf of the car wash). I don’t know what will give In-n-Out (aka Bully Burger) pause, but hopefully something will soon, cause the way they use litigation seems entirely unfair to me.

  • Linda W says:

    Other than they are both yellow, the arrows are absolutely nothing alike, no one could possibly confuse them … even Ray Charles could see that!! In-n-Out burgers goes after In & Out Car Wash 6 months after the burger joint moves to No. Nevada and 18 years after the car wash began operating here! What part of crazy is that on their part and of their attorney?? This sounds like major brand bullying and shows that the burger joint isn’t the brightest around. Like you, I have never understood the attraction to the place.

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