In-N-Out Sends Punny Cease And Desist Over Fairly Clear Trademark Infringement

from the not-bad dept

You may have heard the general mantra that "puns are the lowest form of comedy." Heathens say that, because puns are great and, if I had my way, there would be a legal requirement to use at least one in every legal document this country produces. They can also be used to lighten up what would otherwise be heavy legal actions. Such is the case with In-N-Out Burger, which decided to respond to what is pretty likely trademark infringement with a pun-laden cease and desist.

We'll start with the product that was likely infringing on In-N-Out's trademarks, which itself involves some punnery.

The back and forth banter all started on July 12 when Seven Stills took to Instagram and posted a photo of its soon-to-be-released "barrel aged neopolitan milkshake stout." The beverage's logo featured In-N-Out's famous red palm tree lining, arrow logo and the phrase "In-N-Stout Beer."

In case you're wondering just how clearly Seven Stills' use of In-N-Out's trade dress was, here is the brewery's own Instagram post.

Barrel aged neopolitan milkshake stout coming soon. @innout

A post shared by Seven Stills of SF (@sevenstills) on

In case you're somehow unaware of In-N-Out's log and cup design, the In-N-Stout effort above is a very clear play on it:

So, yeah, despite the two companies being in different markets, this sort of use could still cause some kind of confusion and create an impression of affiliation between the two entities. If you really want to argue any of that, I suppose you can, but this is probably trademark infringement.

In-N-Out, which we have criticized in the past for some dodgy trademark behavior, deserves some credit here instead for firing off a cease and desist that certainly didn't take itself too seriously.

After In-N-Out caught wind of the idea, its legal team crafted a cease and desist letter jam-packed with puns related to beer making.

"Based on your use of our marks, we felt obligated to hop to action in order to prevent further issues from brewing," part of the letter read.

The C&D actually had way more puns than just those, however. Given the gentle and congenial nature of the C&D, in fact, Seven Stills made a point to post the entire thing to its Instagram account, as well as agreeing to alter its beer's trade dress to remove In-N-Out's branding from the can.

We count 9. Can you find them all?

A post shared by Seven Stills of SF (@sevenstills) on

If you can't see that, it reads:

Dear Seven Sills Brewery & Distillery,

We at In-N-Out Burgers ("In-N-Out") received multiple reports of your "In-N-Stout Beer" featured on your social media pages. The In-N-Stout Beer label features In-N-Out's trademarks including our palm tree and arrow logos along with a substantial similarity to In-N-Out's brand name. Based on your use of our marks, we felt obligated to hop to action in order to prevent further issues from brewing.

In case you are not already aware, In-N-Out owns multiple trademark registrations in these marks. As you may expect, we tap into a lot of effort in protecting our marks, which includes limiting their use by others.

Please understand that use of our marks by third parties ales us to the extent that this could cause confusion in the marketplace or prevent us from protecting our marks in the future. We hope you can appreciate, however, that we are attempting to clearly distill our rights by crafting an amicable approach with you, rather than barrel through this.

Accordingly, we request that you refrain from further use of In-N-Out's marks by not selling or promoting items featuring our marks, and removing images of "In-N-Stout" and any other items featuring our marks from your website and social media pages. Please contact us as soon as possible, so this does not continue to ferment. Thank you for your time and consideration, and we look froward to resolving this in good spirits.

The lesson here isn't that there wasn't some other way to work this out beyond a cease and desist notice. No, the point here is that trademark issues can reach amicable ends if only companies are congenial with one another... and use as many puns as possible.


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  • identicon
    Anonymous Coward, 17 Aug 2018 @ 1:15pm

    As a computer programmer, I always figured that "puns are the lowest form of comedy" was a good thing... puns are the base on which all other comedy stands.

    reply to this | link to this | view in chronology ]

  • icon
    That Anonymous Coward (profile), 17 Aug 2018 @ 1:43pm

    Perhaps maybe just maybe corporations are learning that being giant dicks isn't the best play.

    Dilly dilly, we let you do this once but staphhhhh!

    The puns in this letter which more than likely resulted in an aneurysm in one of the lawyers brains.

    Understanding that your consumers don't only do business with you but with others & that being a prick over something consumers could see as nod from another fan can result in blowback.

    This was handled well, and one would hope the brewer might reach out and ask for permission to do an approved nod moving forward.

    reply to this | link to this | view in chronology ]

  • icon
    Ninja (profile), 17 Aug 2018 @ 1:50pm

    So after some ins-n-outs everybody felt relaxed and glad nothing got spilled all over the courts. Ahem.

    reply to this | link to this | view in chronology ]

  • icon
    Stephen T. Stone (profile), 17 Aug 2018 @ 1:51pm

    And the trolls say you never run positive stories in favor of IP owners. Let them drink stout!

    reply to this | link to this | view in chronology ]

    • This comment has been flagged by the community. Click here to show it
      identicon
      Anonymous Coward, 17 Aug 2018 @ 4:26pm

      Re: Techdirt never runs positive stories in favor of IP owners.

      you never run positive stories in favor of IP owners.

      1) You are accurate for once.

      2) This is not "IP", it's trademark. You've been reading here for years and haven't learned a thing.

      3) But you do correctly term them "owners". Therefore you know that piracy is stealing.

      4) If you try to argue on points 1-3, you'll just tangle yourself in further lies, so I advise jump to the only area you're good at: ad hom.

      reply to this | link to this | view in chronology ]

      • icon
        Stephen T. Stone (profile), 17 Aug 2018 @ 5:03pm

        This is not "IP", it's trademark.

        Wikipedia has “trademark” under a specialized “Intellectual property and Intellectual rights law” section.

        you do correctly term them "owners"

        Inasmuch as the own the government-granted artificial “rights” to their intellectual property? Yes, I do.

        Therefore you know that piracy is stealing.

        Piracy is copyright infringement. What happened in the case outlined in the article is trademark infringement. While a reasonable (though not altogether insurmountable) case could be made that trademark infringement is a form of theft, the same cannot be said of copyright infringement.

        If you try to argue on points 1-3, you'll just tangle yourself in further lies

        First of all, why the hell would I argue against point 1? (I mean, other than that “for once” bit, but given your history here, I can let that slide.) Second, I am more than willing to put up when you ask me to shut up, so I would suggest you find the testicular fortitude necessary to put up a decent argument instead of trying to make me shut up so you can claim a “win”.

        I advise jump to the only area you're good at: ad hom.

        Do you have a drive-in screen in your backyard, by any chance?

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 19 Aug 2018 @ 1:19pm

          Re:

          Inasmuch as the own the government-granted artificial “rights” to their intellectual property?

          You have that backwards. There's no "intellectual property" unless government-granted privileges create it. (We could say the same about "real property", as the native Americans learned.)

          Piracy is copyright infringement.

          That's the term some people use. You're welcome to your opinion about whether copying is akin to violent plundering, but should be aware of the view you're implicitly promoting.

          reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 17 Aug 2018 @ 6:38pm

        Re: Re:

        This is not "IP", it's trademark

        Better tell Disney's IP division to take the TM off all their shit, then.

        You fucking liar, blue boy.

        reply to this | link to this | view in chronology ]

  • identicon
    Bruce C., 17 Aug 2018 @ 2:06pm

    FWIW

    If you've never been west of the Mississippi (or the Colorado, for that matter), there's a good chance you aren't familiar with the In'n'Out logo or cup design.

    reply to this | link to this | view in chronology ]

    • icon
      Ben S (profile), 19 Aug 2018 @ 2:23pm

      Re: FWIW

      I'm west of both, we have a few In'n'Out locations. They aren't the most common, but believe me I visit every once in a while for the animal fries.

      reply to this | link to this | view in chronology ]

  • icon
    Cybe R. Wizard (profile), 17 Aug 2018 @ 2:20pm

    An opun and shutup case? (sorry, sorry ...not)

    It's good tissue a rare but well-done C&D instead of allowing the problem to marinate or dragging them into court and grilling them about it.
    I'm sure that the beer company will find a meating of the minds is much better than a burning of the meal ticket.
    After all, how does one garnish wages of a whole company?
    I think that everyone a grease fire hurts everyone equally!
    I think in such a cheesy situation we must let tom pick on may. Otherwise there's no catch-up. Wheat all grain from it.

    reply to this | link to this | view in chronology ]

    • This comment has been flagged by the community. Click here to show it
      identicon
      Well, well. Here's another..., 17 Aug 2018 @ 4:29pm

      ZOMBIE! 8 comments in 3 years, 28 month gap since 2016.

      Thought were going to get through week without me seeing any, but they usually come out in Geigner's pieces...

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 17 Aug 2018 @ 2:41pm

    I lean toward believing that the original tweet announcing the new beer containing an "@innout" was their way of asking for permission. They certainly brought it to In-N-Out's attention right away. It's no surprise then that when receiving a "sorry but no" the beer maker changed direction.

    reply to this | link to this | view in chronology ]

  • icon
    Cybe R. Wizard (profile), 17 Aug 2018 @ 2:45pm

    Puns and word humor in general

    Puns and word humor in general are the only forms of humor which aren't inherently cruel although they can be so and in spades, but only when intended.

    If that's low then so be it.

    "I have seen the future, and it is just like the present, only longer."
    Kehlog Albran, "The Profit"

    reply to this | link to this | view in chronology ]

  • identicon
    Pixelation, 17 Aug 2018 @ 2:47pm

    In-n-out not being dicks is so wort it.

    reply to this | link to this | view in chronology ]

  • identicon
    Jeff Anderson, 17 Aug 2018 @ 3:16pm

    False flag marketing?

    Well, is it?

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 17 Aug 2018 @ 7:37pm

    In and Out was a phrase I used 50 years ago and was well known by all I knew back in the 60s and it had absolutely nothing to do with hamburgers!!

    reply to this | link to this | view in chronology ]

    • icon
      James Burkhardt (profile), 18 Aug 2018 @ 7:01am

      Re:

      That is true. It still, in fact, is in the common lexicon. And Techdirt has previously noted places where In-n-Out (note the use of the 'n' in place of 'and' to create distinctiveness) overstepped their trademark rights.

      In-n-Stout might be confusing but I would not assume an association on the name alone because of the common phrase, but the appropriation of the trade dress (the way the logo is designed, and the distinctive cup design) would make me assume an association between the stout and the fast food chain, as odd as it seems. Because of this, Techdirt has highlighted a genuine trademark concern, and highlighted a decent way of handling things.

      reply to this | link to this | view in chronology ]

  • icon
    That One Guy (profile), 17 Aug 2018 @ 11:32pm

    Alright, who warped us all to bizzaro world?

    Civility among companies rather than furious threats, denials, and then caving only after a protracted legal battle? What madness is this?

    Even crazier, it worked, though I'm sure it's entirely a one in a billion exception, I mean it's not like this sort of thing could ever work in other instances and put the 'angry lawyer sending threatening letters' out of business.

    reply to this | link to this | view in chronology ]

  • icon
    orbitalinsertion (profile), 18 Aug 2018 @ 12:28am

    They both look good and it didn't cost a lot of money.

    Are we sure these people are doing business in the general modern business climate and in the US, or have i slipped into another universe?

    reply to this | link to this | view in chronology ]

  • identicon
    Agammamon, 18 Aug 2018 @ 10:09am

    Trademark, shmademark -

    barrel aged neopolitan milkshake stout

    That just sounds horrible. Like upset stomache and foamy puke just waiting to happen. In a can.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 19 Aug 2018 @ 7:44am

    Instagram not loading

    The Instagram images just show a rounded rectangle with a circle and dot inside, and the links lead to blank pages. Looking at the source I suspect Javascript needs to be enabled.

    I still don't understand why Techdirt does the "here's the Twitter text in case you can't see what's above" thing—where "above" and below have the same text included in Techdirt's HTML. Something like that would have helped here.

    reply to this | link to this | view in chronology ]

  • identicon
    John Cressman, 20 Aug 2018 @ 5:46am

    Brilliant!

    That's a great, thoughtful response. If only more companies responded with such wit.

    reply to this | link to this | view in chronology ]


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