If I am ordering a Double Double, I am ordering a hamburger from In-N-Out Burger, which is probably pretty obvious for anyone from the West Coast. This is the power of a trademark after all – consumers instantly recognizing the source of goods by virtue of a phrase. What makes this example all the more interesting is that the Double Double mark is conceptually weak. In my opinion, it describes what type of hamburger I am ordering. Double the meat, double the cheese. Same goes for the Triple Triple. Triple the meat, triple the cheese. A weak mark means a narrower scope of protection. Theoretically, competitors’ marks can sidle closer to each other in the marketplace without causing a likelihood of confusion.
Now that close to fifty-five years have passed, since the first sale of a Double Double hamburger, the conceptually weak mark has acquired distinctiveness, which means that customers, when they encounter a Double Double hamburger in the marketplace, realize they are not ordering just any double meat, double cheese hamburger, but a specific double meat, double cheese hamburger from a specific source. This is, of course, supported by In-N-Out’s six federal, incontestable registrations for Double Double and Triple Triple for hamburgers and other related goods and services. Thus, In-N-Out’s initially narrow scope of protection has expanded. The question now pending before a judge in the Central District of California is – has In-N-Out’s trademark rights expanded such that it can stop a competitor from using a similar mark, or dare I say, an amalgamation of its marks.
Enter Smashburger, and its Triple Double hamburger. On November 14, 2016, Smashburger filed two federal trademark applications for Triple Double and, interestingly, also two federal trademark applications for Smashburger Triple Double, for essentially the same goods and services as In-N-Out. The United States Patent and Trademark Office examined Smashburger’s applications for any conflicting marks (including In-N-Out’s registrations), and finding none, on April 4, 2017, approved all four of Smashburger’s applications for publication. Quickly, thereafter, on June 2, 2017, In-N-Out opposed Smashburger’s applications, citing trademark infringement and dilution. In a shrewd move, on July 11, 2017, Smashburger then answered the Notice of Opposition and counterclaimed, seeking cancellation of In-N-Out’s Triple Triple registration, based on abandonment.
Smashburger asserts that In-N-Out stopped using the Triple Triple mark and thus, abandoned its rights, when the triple meat, triple cheese hamburger was rebranded as the 3X3 hamburger over three years ago, the generally understood benchmark for abandonment of rights. And, in my research of In-N-Out’s archived web pages, as far back as 2012, In-N-Out appears to have done exactly what Smashburger asserts – it replaced the Triple Triple hamburger from its Not-So-Secret Menu with the 3X3 hamburger. Magically, references to the Triple Triple mark reappear on its Not-So-Secret Menu in early September of 2017, right after Smashburger sought to cancel In-N-Out’s Triple Triple registration. This leapfrogging of rights may be the saving grace to Smashburger’s rights in its Triple Double mark.
As we all know, a trademark need not be written to be a trademark; spoken words (or just a series of distinct sounds for that matter) are just as much a trademark as written words. When first tasked to write this article, strictly for research purposes only of course, I went to my local In-N-Out restaurant, and while only the Double Double hamburger is listed on the menu, I ordered, and was given, a Triple Triple hamburger. I suspect even over the last five years, I could have ordered and received a Triple Triple hamburger then as well. Thus, I believe there is lingering goodwill in the Triple Triple mark, during a period of suggested abandonment of the mark, supporting In-N-Out’s claims that its rights in the mark have not been abandoned.
Turning back to the dispute at hand, rather than hash it out before the Trademark Trial and Appeal Board, in a not-so-surprising move, on August 28, 2017, In-N-Out filed a civil suit in the Central District of California, citing the same claims as asserted in its TTAB Notice of Opposition. In-N-Out and Smashburger then stipulated to suspended action on the TTAB proceeding, pending the disposition of the civil suit. This brings us to the present and back to the question – has In-N-Out’s trademark rights in its Double Double and Triple Triple marks expanded over time such that In-N-Out can stop its competitors from using a similar mark, and specifically, Smashburger from using its Triple Double or Smashburger Triple Double marks?
Notably, In-N-Out chose not to take action against other competitors over their use of the word Double for hamburgers, like Double Whopper, Double Jack, McDouble and Dave’s Double, and likewise Triple for hamburgers. But, I opine that it is the unauthorized use by third parties of the combination of In-N-Out’s Double Double and Triple Triple marks, that appears to be particularly worrisome to In-N-Out, and where it has decided to draw its battle lines. Of course, In-N-Out has in the past taken issue with third parties, who have used identical marks as well, including its 2007 civil suit against Chadder’s Restaurant in Utah for trade dress and trademark infringement. So, to take action against Smashburger for its use, not of an identical mark, but a variant mark, demonstrates In-N-Out’s intent to stretch its rights. In fact, this broadening of rights includes not just taking action against variant marks, but also against marks being used for different goods and services. More specifically, in addition to the Smashburger opposition, In-N-Out has also opposed an application filed by 3 Sons Brewing Co., LLC for its Double Double mark for beer – beers and hamburgers being arguably complimentary and thus, related goods. The Notice of Opposition was filed on July 25, 2017 and is currently still pending before the Trademark Trial and Appeal Board. I imagine 3 Sons Brewing is keeping a watchful eye on the Smashburger case to glean any potential weak spots in In-N-Out’s trademark rights.
At the end of the day, I think that In-n-Out is facing an uphill battle (particularly given the differences in the subject marks and potential abandonment of the Triple Triple mark), but not an insurmountable one. Whether you think there is a likelihood of confusion between the Double Double / Triple Triple marks and the Triple Double mark, the life cycle of In-N-Out’s trademark rights and its current growth pattern are fascinating to witness. Over time, even conceptually marks can become strong, but it is not merely by use and marketing alone, but enforcement of your rights. When and how far to stretch your rights become critical elements in your strategy to broaden your rights, and they vary, depending on the mark, the industry, and so on, but the common thread is – if you don’t stake your ground, you can lose it.
Additional background content provided by Caleb L. Green, law clerk at Dickinson Wright’s Las Vegas office.