In-N-Out Burger sued Smashburger on Monday over the use of the phrases “Triple Double” and “Smashburger Triple Double” to describe a new burger with two layers of beef and three layers of cheese.
Smashburger’s Triple Double burger debuted on the Denver-based chain’s national menu in July.
In the lawsuit, filed in U.S. District Court in California’s Central District, In-N-Out attorneys contended that the phrases were too similar to the “Double Double” and “Triple Triple” trademarks held by the Irvine, Calif.-based chain.
Seeking injunctive relief and unspecified damages, the lawsuit claimed federal and state violations of trademark infringement, unfair competition and trademark dilution. It argued that customers could be confused and incorrectly believe that Smashburger’s products came from or were authorized by In-N-Out.
In a statement, Smashburger said the Triple Double burger was launched to commemorate the chain's 10th anniversary, and has been very popular, according to Tom Ryan, Smashburger's co-founder and CEO.
To date, the burger is credited with contributing to double-digit traffic and sales increases for the more than 370-unit chain, he said.
"Frankly, we are flattered by the attention In-N-Out has given our Smashburger Triple Double," Ryan said. "The Triple Double burger is clearly popular with our customers, and is not comparable to any In-N-Out menu offering.
"We invite all burger lovers to taste the Smashburger Triple Double and decide for themselves," he added.
In-N-Out has a history of aggressively protecting its trademark and trade dress in court.
Over the years, In-N-Out has sued a number of other businesses using the name In-N-Out, as well as the chain CaliBurger for using similar imagery and the phrase “animal style.”
In 2011, a lawsuit targeted Maryland-based Grab-N-Go Burger for using similar logo colors, trade dress and menu descriptions. The burger chain also sued third-party delivery specialist DoorDash for marketing menu items without permission, citing trademark violations.
Trademark attorney Jennifer Ko Craft, a partner at the law firm Dickinson Wright in Las Vegas, who is not involved in the case, said the U.S. Patent and Trademark Office approved Smashburger’s application to use the “Triple Double” phrase last year, despite In-N-Out’s prior registrations. In-N-Out has also opposed Smashburger’s use of the phrase with the U.S. trademark office. That complaint is still pending, according to the lawsuit.
Craft sees the phrase as potentially descriptive and commonly used in the industry.
“When you have descriptive wording, your rights are somewhat weak,” she said. And, because Smashburger mixed the phrases, “I think there’s enough differentiation.”
But In-N-Out, which was founded in 1948, has been associated with the “Double Double” and “Triple Triple” terms since the 1960s, so the phrase could be seen as having secondary meaning.
American Airlines, for example, could be seen as a descriptive phrase for any airline in America, but most people recognize it as a specific brand name, so the term has secondary meaning, Craft explained.
Update: Aug. 30, 2017 This story has been updated with a comment from Smashburger.
Contact Lisa Jennings at [email protected]
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