In-N-Out Trademark Tourism Allows It To Keep Mark For ‘Double-Double’ In Canada
from the double-double-trademark-abuse dept
In-N-Out is In-N-At it again. In our many posts on the burger chain, we’ve discussed the company’s habit of what I’ll call trademark tourism. In posts that have focused primarily on its trademarks in Australia, we’ve detailed out how In-N-Out will conduct a popup restaurant in these countries that it otherwise has zero brick and mortar presence in, usually once a year or so, simply to satisfy the use-in-commerce requirements to retain its registered trademarks. This allows the company to lock up language and branding in a country it refuses to operate in generally, other than these bullshit events designed solely to allow it to keep these trademarks active and registered.
It should be obvious to everyone that this sucks. It wasn’t the point of trademark laws in general and it’s a naked attempt to game the system on a technicality. But In-N-Out keeps getting away with it, and not just in Australia.
Way back in 2019, Tim Horton’s asked asked Canada’s trademark office to review the trademark In-N-Out has for “double-double,” the chain’s famous burger order. As in Australia, In-N-Out has no permanent storefronts in Canada. But, just as in Australia, the company shows up with its popup trucks every once in a while to keep its registered mark.
In 2019, Tim Hortons Canadian IP Holdings Corporation requested a review of In-N-Out’s ownership of the trademark. If a company holds a trademark, but cannot show that it has been used over the last three years, the trademark can be expunged, leaving the word or phrase free game for another user to register. But the Canadian Intellectual Property Office decided that In-N-Out Burger had been actively using the trademark, because of the company’s annual burger sales at the Langley Good Times Cruise-In.
“In addition to using its cookout trucks in certain locations in the United States, the owner [In-N-Out Burger] has also used its cookout trucks to sell food products in Canada for many years,” wrote Timothy Stevenson, a member of the Trademarks Opposition Board, in a Nov. 1 ruling.
There’s a reason Tim Horton’s has an interest in this particular trademark. In Canada, a double-double is best known as a coffee order with two creams and two sugars.
Now, Tim Horton’s probably doesn’t want to risk a trademark infringement suit from In-N-Out, especially when the latter doesn’t even truly operate within the country other than this one event it does. An event in which In-N-Out makes no profit, by the way. The company covers its own costs and then the rest goes to charity. There’s nothing wrong with that, obviously, but I’m driving the point here that In-N-Out isn’t clinging to this trademark because it wants to do business in Canada. It clearly doesn’t.
The annual burger sale is not for profit. It covers its costs, and then any money above that goes to the Cruise-In Society, which distributes the cash to local charitable causes.
But according to the trademark office, that doesn’t matter. All that In-N-Out needs to do is participate in this charity event once every three years and it gets to keep its trademark.
Again, that isn’t what trademark laws are designed for. The public is very much not being served by allowing the company to retain the mark. For 364 days a year, there’s no public confusion even possible in Canada.
Trademark tourism of this kind simply shouldn’t be allowed, full stop.
toil and trouble
Filed Under: canada, double double, popups, trademark, trademark tourism
Companies: in-n-out, tim hortons
Comments on “In-N-Out Trademark Tourism Allows It To Keep Mark For ‘Double-Double’ In Canada”
In-N-Out Blasphemy! You should undergo self floggings, 3 hail margaritas and drink nothing but pink lemonade for approximately 1 year.
Tim Hortons Canadian IP Holdings Corporation
Sweet Mother of Gawd, for real?
i guess if one demonic presence is gonna fight another, fine, i suppose.
'Just because I don't want it doesn't mean you can have it!'
Nothing like a law meant (theoretically) to prevent customer confusion by preventing identical trademarks from being used instead abused by a company that’s not even in the market but still insists on blocking anyone else from using it.
I never even heard of in-out bugger until it was mentioned in a movie.
As for Double-Double, that’s a coffee from Timmies and has been known as such for half a century.
Sadly nobody at the time thought it would be trademarked by some slimy us burger franchise.
Doubly sad is that Timmies is now in the clutches of an international franchise holder who is running it into the ground through incompetence and greed.
Re:
Is it, though, or is it such a coffee from anywhere? Cream and sugar are the “standard” additives to coffee, and this seems like such a purely descriptive phrase that it’s hard to imagine many people using it that specifically. Hell, any product with some number each of two “obvious” things could be described that way. Like maybe a cheeseburger or bacon hamburger with 2 patties and 2 pieces of cheese or bacon (and those were total guesses, but Wikipedia says the former is exactly what In-N-Out means). And we could extend that to double-double-double or triple-triple-triple for e.g. a bacon-cheese-hamburger.
The franchisees are helping plenty. It was maybe 20+ years ago that they were complaining to Corporate about “rogue” franchisees “stealing” business by making doughnuts in larger-than-specified sizes. Corporate brought the hammer down on them, and later took away doughnut-making privileges from franchisees altogether (they’re now partially baked in a Brantford factory, frozen, and shipped to stores for “finishing”).
Re: Re:
The stealing customer thing smells like a smokescreen.
Centralized manufacture.
Frozen product.
No need to employ skilled bakers or muffin masters.
No discount baked goods for college students at closing.
Corporate win all around.
So what if someone at a franchise is too dumb to follow the SOP and takes product straight from the freezer to the oven without first thawing them.
Re: Re: Re:
Well, the end result is that I once loved Tim Horton’s (donuts and coffee) but for the last twenty years I’ve been going to Starbucks instead.
Starbucks doesn’t even offer donuts, but Tim Horton donuts are so “Meh” now, that I don’t care — and Starbucks coffee is not only better (yeah, yeah… I know) but more consistent quality too.
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Could be, but all the stuff you listed helps the franchisees more than the corporation (which was not paying labour costs, hiring bakers, or compensating franchisees for unsold product). So I’m still reluctant to give all the blame to the “international franchise owner”. They weren’t acting alone, at least, in being greedy or “running it into the ground”.
By the way, rumour around the Hamilton area—where Horton’s started—is that a west-end place called Grandad’s is using the old Horton’s doughnut recipes. Really, it’s hard to judge based on decades-old childhood memories, but it does remind me of the pre-Wendy’s days and it seems popular (by mid-afternoon, it’s apparently common to find most varieties sold out).
its not infringement
At least in the US you dont get to trademark a hamburger combo and complain if someone uses it for coffee. There is no confusion to prevent.
In-N-Out
Living in Alaska, driving all the way to and from Halifax to travel all over the world in my camper, I have the highest respect for Tim Horton’s and Canada and it’s citizens.
However, In-N-Out is NOT a typical slimy chain fast food place. I have been eating there intermittently since 1967. They don’t use frozen anything, their veges are always fresh, they currently pay OVER the California minimum wage (I think they start at $18), and they have extremely high employee happiness. They cook everything to order. The owner of the French Laundry (3 star Michelin restaurant in California), Thomas Keller, had them cater a party for his employees.
In-N-Out is different and I “give them a pass”.
This comes from someone that would rather eat cockroaches than all other fast food.
Incorrect
This story has inaccuracies that need to be pointed out! In and out comes to our community every year to support a charity. They don’t cover costs they come up here and donate all of their time, their food, their merchandise. And every penny stays in Canada and goes to canadain local charity. This company is amazing. So what if they want to protect a trade mark they own for future use, they deserve it!