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.
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:[framed_box]
(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[/framed_box]
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.