To fast-food lovers, the words “Double-Double” and “Triple-Triple” are as synonymous with In-N-Out Burger as freeways and beaches are with Southern California.
Or at least that’s the argument the Irvine-based chain made in a federal trademark lawsuit filed Monday against its competitor, Smashburger.
The suit alleges that the Denver-based chain’s new Triple Double sandwich looks, smells and sounds too much like In-N-Out’s own beloved fare.
In-N-Out argues that Smashburger’s Triple Double infringes on its trademark and dilutes its distinctive quality.
Smashburger’s actions, the suit claims, are unfair and have created “a likelihood of consumer confusion because actual and prospective customers are likely to believe that In-N-Out has approved or licensed Smashburger’s use of its marks, or that In-N-Out is somehow affiliated or connected with Smashburger or its services.”
For its part, Smashburger denies the claim.
In a statement released Tuesday, Smashburger co-founder and Chief Executive Tom Ryan said the Triple Double burger “is not comparable to any In-N-Out menu offering.”
Ryan said the burger was added to its menus in July, and promotional materials call it “the stuff burger dreams are made of … two layers of juicy beef, three layers of melted cheese, wrapped up in an artisan bun.”
“Frankly we are flattered by the attention In-N-Out has given our Smashburger Triple Double,” Ryan said.
In-N-Out claims it has opposed the Smashburger creation ever since it got wind of the company’s intent to trademark the burger. According to the suit, In-N-Out even filed paperwork with the U.S. Patent and Trademark Office, contesting Smashburger’s move.
In Monday’s filing, the 68-year-old company included 17 photocopied trademark documents from the California secretary of state’s office and the U.S. Patent and Trademark Office, dating back to at least 1975.
In those documents, In-N-Out describes the Double-Double as “a sandwich, namely, a burger the principal ingredients of which are two meat patties and two slices of cheese.”
It’s Triple-Triples are described as “made-to-order cheeseburger sandwiches having three cooked beef hamburger patties and three cheese slices, for consumption on or off the premises.”
So, is this a clear-cut case?
No. Any business can make a two-meat, two-cheese hamburger, said attorney David Schwartz, who litigates intellectual property cases and is a partner in the Raines Feldman LLP law firm. Both McDonald’s and Burger King have a double cheeseburger.
While someone can’t trademark the word “double,” a descriptive term, they can trademark how it is used in their brand, he said. In this case, a Double-Double is synonymous with In-N-Out and is specific to them.
“Where descriptive words can be allowed is when they become distinctive through acquired secondary meaning, which occurs when consumers recognize the mark as a source indicator of the goods,” Schwartz said. “So here, if someone told their friends they had a Double-Double for lunch, most people would likely think that person had a burger from In-N-Out.
“On the flip side, regarding likelihood of confusion, would a consumer walking into a Smashburger restaurant be confused as to the origin of the burger they are purchasing at that moment in time? Most likely not, but that’s a question that will be weighed,” he said.
Schwartz said he thinks In-N-Out has a good claim.
“In-N-Out has a very robust portfolio of registered trademarks, and it’s quite strong,” he said. “It’s arguable that consumers associated all of those trademarks with In-N-Out.”
Smashburger would have been better off had it gone a different route, Schwartz said.
For example, he said, it could have named the burger a Triple Double Smashburger, which would put emphasis on the Smashburger.
Until then, he said, the Smashburger’s Triple Double is “almost like a kissing cousin” to In-N-Out’s menu items.