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A triple double burger battle

31-08-2017

Not quite in time for this year’s National Burger Day, US fast-food chain In-N-Out Burger has sued rival Smashburger for trademark infringement following the launch of its ‘triple double’ burger. In its complaint, filed on 28 August, In-N-Out alleges that the mark is confusing similar to its own ‘double-double’ and ‘triple-triple’ trademarks.

In-N-Out owns a number of burger-related trademarks, including ‘double-double’ and ‘triple-triple’ to protect its signature burgers. It opposed four applications by Smashburger to protect its ‘triple double’ product name at the US Patent and Trademark Office (USPTO), filed last November, and is now suing the rival chain over its use of the allegedly infringing name. In-N-Out alleges that the ‘triple double’ is “likely to confuse and mislead the consuming public” into believing that In-N-Out has approved or licensed the product, according to the lawsuit.

This isn’t the first time that In-N-Out has acted to protect its trademarks, or the first burger-related dispute in the fast-food sector. Burger brands of the burger giants are not only ubiquitous, but also fiercely protected. The big fast-food chains have been in the press on numerous occasions as a result of their strict policing of trademark rights; for example, McDonald’s fights anyone daring to use ‘Mc’ on almost everything. Others have learned their lessons the hard way, such as Burger King, which is not able to use that name in Australia and must instead trade under its original franchisee name ‘Hungry Jacks’.  What can smaller and/or newer restaurateurs learn from their example?

Register, register, register (but search first)
One of the most common mistakes of new businesses is not checking if their chosen name is available for use so you should always seek advice before spending money on expensive stationery and shop signs. Registering restaurant names, logos, menus are a vital part of building and protecting business identity. Thought should be given to the protection of those aspects that are of commercial importance and which might be vital to protect if you are considering operating a franchise or a chain of outlets.

  • What should you register? The restaurant/chain name should be the primary concern, followed by distinctive logos, slogans, menu design, or even restaurant get-up (you will need to show that it is distinctive and that customers will recognise that a certain get-up is associated with your brand).
  • What for? The key class for any business providing food is to register in Class 43. Although other classes can be useful (click here for a full breakdown), many services that your business provides will be covered by this class. Additional classes covering goods will be useful if you intend to sell other items bearing the trademark, or intend to pursue potential licensing deals or spin-offs; for example, sauces. There will need to be adequate trademark protection will also be crucial if the business is to be a franchise.
  • Where? Where to register a trademark can often be the most challenging consideration for growing companies. If your business operates out of a single premise in Birmingham or London, you are unlikely to want to register worldwide, if there is no chance of international expansion. However, strategy regarding expansion and key markets needs to be reassessed at regular intervals. If the business is popular and expands, the brand needs to be protected in potential new markets. Consideration also needs to be given to countries where there is a risk of trademark squatting, such as China and India.

For specific advice on trademark protection, please speak to your Novagraaf attorney or contact us.