v.
Famed California-based fast food chain, and sworn enemy of my cardiologist, In-N-Out Burger, has sued an East Coast-based competitor, Grab-N-Go Burger, for Trademark Infringement, Trade Dress Infringement, and Trademark Dilution. The Huffington Post has a brief article summarizing the claims. Their illustrations are good, but they confuse trademark and copyright.
Editorial Note: Mainstream media articles confuse trademark, copyright, and patents all the time. Journalists, please learn the difference between these types of intellectual property, or contact an IP attorney when you’re writing a story on this type of topic – we are happy to talk about it.
More information on the case and my thoughts to follow…
What is Trade Dress Again? And What Does It Have to Do With Trademarks?
I recently wrote about Trade Dress in the context of China’s fake IKEA stores. In this type of case, Trade Dress concerns the overall consumer impression created by a store – the store’s distinctive look and feel. Often, as in this case, the trade dress and trademark elements may be one and the same. For example, In-N-Out’s filing contained the following allegations on the topic:
The name of the restaurant, particularly the use of “N” as short for the word“and,” the menu selection, the red, yellow, and white color scheme, and the interior design,including white tile walls with a red stripe, all mirror design elements of In-N-Out restaurants.The name on the interior and exterior of Defendant’s restaurant is Grab-N-Go. The words Grab-N-Go are depicted in red block letters in a typeface identical to that used in In-N-Out’s trademarked logo. The name Grab-N-Go is also depicted in conjunction with a curved circular design element in the color yellow in a manner that is highly similar to In-N-Out’s use of the trademarked phrase “In-N-Out” in conjunction with a bent yellow arrow.
In-N-Out also claims, among other things, that “Grab-N-Go offers a “Wild Style Burger” that contains ingredients identical to the Animal® Style burger offered byIn-N-Out.”
Each of these claims individually may not be sufficient to create liability, but In-N-Out’s complaint is an attempt to build the case that Grab-N-Go has appropriated enough components that are distinctive to In-N-Out that their actions rise to the level of intellectual property infringement.
In-N-Out’s 3 Claims
Given the above info, a thumbnail sketch of their three claims:
- Trademark Infringement – INO claims GNG has infringed on specific trademarks owned by INO, such that consumers will be confused as to the source of the products and services – meaning, customers will confuse one restaurant for the other, or will think they are affiliated in some way.
- Trade Dress Infringement – Same as above, except this relates to the overall consumer impression generated by INO restaurants, not to any specific trademark.
- Trademark Dilution – Even if consumers are not actually confused and do not believe the restaurants are identical or are affiliated, GNG’s use of marks similar to INO’s trademarks will weaken the value of INO’s trademarks, either by blurring the marks (similar to, but not quite the same as, consumer confusion) or by tarnishing INO’s marks by creating a link between INO and an allegedly inferior product.
I’ll freely admit to being an In-N-Out fan and partisan, so I’ll withhold judgment until I see whether and how Grab-N-Go responds to these claims. Either way, this case is a good illustration of some of the twists and turns of trademark and trade dress law. In-N-Out clearly has a brand with a great deal of value – but sometimes it’s hard to put a finger on exactly what elements make up that brand, and exactly when a competitor has gotten close enough to be violating their rights. This kind of grey area is interesting for trademark lawyers and scholars, but unfortunately it can be challenging and costly for business people. I’m skeptical whether either side will be a winner in this dispute.
