September 22, 2020

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

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.
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