In 'N Out Burger Continues Its Bullshit Pop-Up Technique To Keep Trademarks It Isn't Actually Using

from the literally-in-and-out dept

Roughly a year back, we discussed famed American burger chain In 'N Out Burger cynical process for keeping trademarks it owns in certain countries in place, despite the chain having no actual presence in the country. You might be wondering how a company with no storefronts or delivery business in a given country could possibly hold valid trademark rights to its brand, given trademark law's requirement that companies actually use their trademarks in commerce to keep them. The answer to that is that In 'N Out flies staff out to several countries once every couple of years and launches a pop-up store, slinging burgers for a short period of time before packing everything up and heading home. The chain claims that this is done to raise its profile in other countries for an eventual permanent launch. Except that those launches never actually happen.

It's all very frustrating, if for no other reason than nobody can figure out why In 'N Out cares so much about trademark rights in a country it sure doesn't seem to have any interest in doing business in. Well, the confusion continues, as In 'N Out has announced it will once again launch pop-up stores in New Zealand.

American fast food chain In-N-Out Burger will open a pop-up store in Auckland on Thursday, sparking hopes for a permanent restaurant.

The pop-up store will be be open between 11am and 2pm at the Portland Public House.

But if history is anything to go by, burger lovers should not get too excited.

No, they shouldn't. Even this Stuff post indicates that there doesn't seem to be any question as to the chain's doing this strictly to keep its trademarks from being invalidated. The law in New Zealand requires a trademark holder to engage in "genuine use" of the mark within the country three years from it being granted. These pop-up stores are In 'N Out attempting to fulfill that genuine use requirement, although there are questions as to whether or not such a use actually counts as genuine.

Lawyer Clair Foggo, from Potter IP, said the company could be trying to protect its trademark in New Zealand.

"What happens is if you have a trademark registration, you have three years from the date of registration to use it. If you don't use it in a genuine way it become vulnerable to revocation."

If a trademark is not used within a three year period and lapses, a person can apply to have it removed from the register and may file their own application for the trademark claim, Foggo said.

"It sounds like they are trying to use their trademark in a genuine way, not just putting out some merchandise or using it on social media," she said. "However there may be some question whether operating a one day pop up shop amounts to "genuine" or token use."

So what counts as genuine use? It's delightfully ambiguous, of course. That ambiguity melts away, however, once you consider what the purpose of trademark law actually is, which is to prevent public confusion as to the source and association of goods and services. In that context, fleeting uses by major foreign brands preventing domestic companies from making use of similar branding makes absolutely zero sense. In fact, you could argue that In 'N Out's tactic achieves the opposite. Ironically, the use of pop-up stores only increases the brand awareness of the company within New Zealand, where the company mostly does not bother doing business. It may be only because of these pop-up stores, in other words, that a domestic company using similar branding would create confusion.

Bottom line: it would be quite nice if In 'N Out would stop playing these trademark games, and ceased using hamfisted and cynical tactics just to have trademark rights in a country it doesn't want to do business in.

Filed Under: burgers, new zealand, pop-up stores, trademark
Companies: in-n-out


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  • identicon
    Anonymous Coward, 23 Jan 2020 @ 8:14pm

    They are in n out though

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

    • icon
      bhull242 (profile), 23 Jan 2020 @ 10:03pm

      Re:

      Well, considering how protective they are about their trademark in it, I suppose it only makes sense that they live up to the name. Now I’m just waiting for them to have a love hotel in Japan to really live up to the name in just about every sense.

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

  • identicon
    Anonymous Coward, 23 Jan 2020 @ 8:18pm

    Flying Fast Food

    We need companies like In and Out to start working on floating food production vehicles such as a rigid dirigible with solar gathering skin to help provide power and keep the gases within warm. It could have drones fly down to deliver food in a footprint around the mother ship, bringing you whatever you crave within minutes.

    At least as long as it isn't In and Out on a Sunday. You will have to find an alternative in that case.

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

    • icon
      Code Monkey (profile), 24 Jan 2020 @ 7:47am

      Re: Flying Fast Food

      Maybe we could get Chic-Fil-A to fill in on those Sundays, yeah?

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

      • identicon
        Talmyr, 27 Jan 2020 @ 5:47am

        Re: Re: Flying Fast Food

        Chic-Fil-A have been having enforced pop-ups in the UK. They open a branch, we get it closed down due to supporting bigotry. Hard to run a shop when no-one wants to use you.

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

        • icon
          btr1701 (profile), 27 Jan 2020 @ 7:45pm

          Re: Re: Re: Flying Fast Food

          Sounds like the same bleating we heard from the 'social justice' crowd in 2012 when the founder of Chick-fil-A had the gall to disagree with 'progressives' on the issue of gay marriage. Note that there has never been any evidence that the company discriminates against gays in either employment or customer service. This was just the company founder's personal religious viewpoint-- and he didn't even run the company anymore.

          Protests were ginned up, boycotts announced, the warriors girded themselves for battle, and... nothing. Worse than nothing from the 'progressive' point of view. Rather than boycotting Chick-fil-A, the rest of the country-- the normals-- made a point of patronizing them and the company had record profits for that week and several weeks after. The drive-thru line for my local Chik-fil-a (in Torrance, deep-blue California, no less) stretched out the parking lot and down the street for a quarter mile.

          It couldn't have been a more resounding defeat and rebuke of the 'social justice' mob.

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

  • identicon
    Anonymous Coward, 23 Jan 2020 @ 8:22pm

    Bottom line: it would be quite nice if In 'N Out would stop playing these trademark games, and ceased using hamfisted and cynical tactics just to have trademark rights in a country it doesn't want to do business in.

    Why would it “be quite nice”? Is there a glut of prospective foreign fast food restaurateurs who will only sling hamburgers if they can call themselves In ‘N Out? What legitimate reason would a new New Zealand burger joint, that opens tomorrow, have to call itself In ‘N Out, other than to create customer confusion and/or appropriate goodwill?

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

    • icon
      That One Guy (profile), 23 Jan 2020 @ 8:33pm

      Re:

      Irrelevant, if they aren't using the trademark then there's no real chance of customer confusion should someone use a similar or even identical name, and showing up for a day or so just to keep the trademark alive is not 'using' it in any meaningful sense, that's just playing childish keep-away.

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

    • identicon
      Anonymous Coward, 23 Jan 2020 @ 10:12pm

      Re:

      Do you not think that people come up with the same names independently?

      Do you think someone has to attempt to use the exact name for sue-happy trademark bullies to come calling?

      Regardless, confusion is not relevant if you aren't in that market. There are no two (or more) offerings between which to be confused. And i wouldn't doubt that if someone ever asked, there would be no hesitation for a foreign concern to declare, "Hell no, no relation to that US joint."

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

  • icon
    That One Guy (profile), 23 Jan 2020 @ 8:30pm

    'No really, we'll set up a store there... eventually...'

    "It sounds like they are trying to use their trademark in a genuine way, not just putting out some merchandise or using it on social media," she said. "However there may be some question whether operating a one day pop up shop amounts to "genuine" or token use."

    I can understand being confused if someone's recently taken several blows to the head and/or ingested some 'interesting' substances, but barring that the answer to the 'question' there seems really obvious: A one-day 'store' from a company that otherwise has no presence in the country is anything but 'genuine', and is pretty clearly only happening to keep the trademark alive.

    If a business only operates in a country for a day or so every several years it's just kinda ridiculous to pretend that they are engaging in 'genuine' business there rather than 'only because we have to, and only as much as we have to'.

    Still, nice to be reminded to stay away from that lot and not give them any money to help them abuse the system like this(not that I really need a reason beyond having a Five Guys nearby mind).

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

  • identicon
    Anonymous Coward, 23 Jan 2020 @ 10:13pm

    Prettty sure that is exactly the definition of "token use".

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

  • icon
    Code Monkey (profile), 24 Jan 2020 @ 7:56am

    Change the local laws

    It's obvious from what Tim has reported here that In 'N Out is abiding by the local law vis a vis "using" their trademark as the current law is laid out.

    It appears that, at the very least, the Kiwis should change the trademark law to require a physical presence, and perhaps add a piece of language that requires they demonstrate they are an actual, ongoing business in the area.

    I'm sure they have similar laws to those in US cities that require a food inspection be done periodically. That would require someone from the local gubmint to physically verify they are really selling burgers (as well as complying with local food control laws).

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

    • identicon
      Anonymous Coward, 24 Jan 2020 @ 9:07am

      Re: Change the local laws

      What do you consider a "physical presence" to be though? Is a company that pays taxes and hosts a website targeting their country, even though there isn't any brick and mortar store, considered to have a physical presence?

      I think it's more down to verifying that the mark is being used appropriately. To me, this has more to do with paying taxes and revenues... even for non-profits who want trade marks.

      But of course, I know almost nothing of NZ trademark law.

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

  • identicon
    pegr, 24 Jan 2020 @ 8:26am

    Well, when you consider...

    When you consider that Burger King in Australia, and I imagine in NZ as well, are named "Hungry Jack's" instead, who knows what can happen with trademarks down under!

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

  • icon
    btr1701 (profile), 24 Jan 2020 @ 12:15pm

    Frustration

    It's all very frustrating,

    Why? I mean, I get that their pop-up burger stands are just a bootstrap way to keep the trademark going, but why would you (or anyone else) care to the point of finding it 'very frustrating'?

    Are you trying to sell burgers in Thailand or New Zealand or Shanghai using the name In 'N Out and being prevented from doing so by the company's trademarks? If not, I can't imagine what about this could possibly be frustrating to you.

    Unless you're trying to use the name In 'N Out to sell burgers in other countries-- and let's face it, there's no reason why anyone would do that other than to try and capitalize on the American company's success and name recognition, thereby making the motive somewhat sleazy and suspect regardless of the legalities-- then it shouldn't frustrate you at all.

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

    • identicon
      Anonymous Coward, 24 Jan 2020 @ 10:00pm

      Re: Frustration

      "there's no reason why anyone would do that other than to try and capitalize on the American company's success and name recognition"

      And again...if they have no intent to actually do business there...who cares?

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

      • identicon
        Anonymous Coward, 25 Jan 2020 @ 3:30am

        Re: Re: Frustration

        How do you know what their intent is?

        Maybe they plan to open there tomorrow; maybe five years from now. Why is it a bad thing for them to keep their options open when it relates to a brand that they've built themselves?

        Alternately, what is the world losing because other people can't sell burgers under the "In 'N Out" name?

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

        • icon
          That One Guy (profile), 25 Jan 2020 @ 11:39am

          Re: Re: Re: Frustration

          And maybe one of the stores that would open up shop were the name not locked down could accidentally stumble upon the The Perfect Burger thanks to a kitchen mishap. Once you allow hypotheticals all sorts of crazy stuff can crop up, but that doesn't mean any of it's valid.

          Trademark is there to prevent customer confusion now, 'They might set up shop at some point in the future' does not a valid trademark justification make, with the law making it clear that trademark is a 'use it or lose it' type law, and if the law is so weak that 'set up shop for a few hours ever couple of years' is enough to qualify then the requirement to use the trademark or lose it is effectively meaningless and should be tossed entirely.

          Alternately, what is the world losing because other people can't sell burgers under the "In 'N Out" name?

          Wrong question, a better question would be 'What is the world gaining because other people can't sell burgers under the In 'N Out or a similar name, even though the company refuses to sell under that name themselves in that area?'

          Trademark is not there to benefit the companies, it's there to benefit the public, and if there is zero chance of customer confusion because the current trademark owner isn't even in the market in question, then there's no reason for them to have the trademark and the legal protections it grants.

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

    • icon
      Wendy Cockcroft (profile), 27 Jan 2020 @ 3:11am

      Re: Frustration

      If some business owner who had never heard of In 'n Out decided to set up a fast food outlet with that name, they might sue him. This is a revenue by trademark trolling abuse issue. They're just waiting for some poor schlub to fall into the trap.

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


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