Topic: Legal

Legal side of Reputation Management

Face Scanning Lawsuit Against Shutterfly Survives Motion to Dismiss 0

This is a lawsuit against Shutterfly alleging violations of Illinois’ biometric information privacy act. The plaintiff, who is not a Shutterfly customer, alleged that a photograph of him was uploaded (by a Shutterfly customer) to Shutterfly’s site and the uploader was then prompted to tag the face with a name. Plaintiff alleged that Shutterfly also extracted additional information “regarding [plaintiff’s] gender, age, race, and geographical location.” Plaintiff did not consent to this collection of information. Shutterfly moved to dismiss on several grounds. The court rejects its request, allowing the lawsuit to proceed.

Applicability of BIPA: The key question was whether BIPA applied to the information Shutterfly extracted. Other companies have been unsuccessful in arguing that information extracted from a photograph is not covered by BIPA. As the court acknowledges, the argument has obvious appeal, given that the definition of “biometric identifier” expressly excludes “photographs” and the definition of “biometric information” further excludes information “derived from items . . . excluded under the definition of barometric identifiers.” However, the court says Shutterfly’s interpretation would limit applicability of the term “scan of face geometry” to only an in-person scan. This narrow interpretation is contrary to the spirit and history of the statute. Shutterfly argued many of the other categories of “biometric identifiers” (iris scans, fingerprints, hand scans) cover information derived from in-person transactions and thus face scans should be treated similarly. The court questions whether this is accurate in light of evolving technology. In any event, the court says the statute is intended to have an expansive reach, and Shutterfly’s interpretation is unduly narrow (and would not account for evolving technologies).

Extraterritoriality/ Commerce Clause: Shutterfly argued that the statute should not apply extraterritorially; and if it did, it would violate the dormant Commerce Clause. The court agrees that the statute is not meant to apply extraterritorially, but says at the pleading stage there are enough allegations that violations of the statute took place in Illinois (or are indeterminate) (“given that [plaintiff’s] biometric data was extracted and stored in cyberspace, how is their physical location to be determined?”). The court also rejects the Dormant Commerce Clause argument, noting among other things that the proposed class is narrowly structured to apply only to photos “uploaded in Illinois”. There is little evidence at this stage that an Illinois law is being used to regulate conduct occurring wholly outside the state.

Damages: Shutterfly finally argued that there was no allegation of “actual damages”.  The court also rejects this argument saying that the plaintiff need only show that Shutterfly violated the statute. In so doing, the court part ways with a few other courts who have required some showing of damages. The court discusses Spokeo in a footnote, finding that plaintiff has alleged sufficient injury-in-fact for Article III standing purposes.

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This is a pretty interesting opinion on all counts, although not a groundbreaking ruling on the question whether scanning uploaded photos implicates the Illinois biometric information privacy statute.

As the court notes, Texas and Illinois have passed a biometric privacy statute. Washington has a statute as well, but it’s slightly different. (See this BNA article noting some differences: “Washington Biometric Privacy Law Lacks Teeth of Illinois Cousin“.) The Illinois statute is far from clear as reflected by several court rulings. It appears that “biometric information” is intended to capture information derived from “biometric identifiers” so the exclusion of photographs from the latter should be the beginning and the end of the analysis. Nevertheless, this court is not alone in rejecting the argument of a company who used technology to “tag” someone in a photo. The court’s citation to the news articles reflecting advances in biometric extraction technology smacks a bit of panic. (See also this Guardian article: “AI can tell if people are gay or straight with one photo of their face“.)

There’s an undercurrent of the ruling that it’s limited in some way to acts that occur in Illinois, but as a practical matter, I wonder how easy it would be for a company such as Shutterfly to exclude Illinois from the locales where it scans photos. Although the court does not delve into precisely how locale is determined and how Shutterfly would go about excluding Illinois if it so wished to, I suspect it’s much easier said than done. This seems much more complicated than, say, restricting content in a particular jurisdiction, which itself seems like a challenge at best. Defendants’ arguments in these cases are vaguely reminiscent of the challenges to anti-spam laws, which mostly failed.

Finally, there is the standing/damages question. Since this case involves state law, it’s different from Spokeo (which dealt with the ability of Congress to carve out standing) but nevertheless the fact that Spokeo only warrants a footnote is noteworthy.

Case citation: Monroy v. Shutterfly, Inc., 2017 US Dist LEXIS 149604 (N.D. Ill. Sept. 15, 2017)

Related posts:

Facebook Gets Bad Ruling In Face-Scanning Privacy Case–In re Facebook Biometric Information Privacy Litigation

Shutterfly Can’t Shake Face-Scanning Privacy Lawsuit

Court Says Plaintiff Lacks Standing to Pursue Failure-to-Purge Claim Under the VPPA – Sterk v. Best Buy

Seventh Circuit: No Private Cause of Action Under the Video Privacy Protection Act for Failure to Purge Information–Sterk v. Redbox

Redbox Can be Liable Under the Video Privacy Protection Act for Failure to Purge Video Rental Records — Sterk v. Redbox

Disney Not Liable For Disclosing Device IDs And Viewing Habits

App Users Aren’t “Subscribers” Under the VPPA–Ellis v. Cartoon Network

Ninth Circuit Rejects Video Privacy Protection Act Claims Against Sony

AARP Defeats Lawsuit for Sharing Information With Facebook and Adobe

9th Circuit Rejects VPPA Claims Against Netflix For Intra-Household Disclosures

Lawsuit Fails Over Ridesharing Service’s Disclosures To Its Analytics Service–Garcia v. Zimride

Minors’ Privacy Claims Against Viacom and Google Over Disclosure of Video Viewing Habits Dismissed

Is Sacramento The World’s Capital of Internet Privacy Regulation? (Forbes Cross-Post)

Hulu Unable to Shake Video Privacy Protection Act Claims

California Assembly Hearing, “Balancing Privacy and Opportunity in the Internet Age,” SCU, Dec. 12

It’s Illegal For Offline Retailers To Collect Email Addresses–Capp v. Nordstrom

California Supreme Court: Retail Privacy Statute Doesn’t Apply to Download Transactions – Apple v Superior Court (Krescent)

CA Court Confirms that Pineda v Williams-Sonoma (the Zip-Code-as-PII Case) Applies Retrospectively — Dardarian v. OfficeMax

California Supreme Court Rules That a ZIP Code is Personal Identification Information — Pineda v. Williams-Sonoma


Source: Eric Goldman Legal

Three Takeaways From The SEC Cryptocurrency Alert 0

SEC cryptocurrency alert legalVirtual currencies have been around since 2009 (or 1998, depending on how you look at it); yet, legal and regulatory questions remain. Are digital currencies securities? Is it OK to sell tokens, even if you’re not registered with the SEC or state equivalent? Are Initial coin offerings subject to the Securities and Exchange Acts?

Recently, the SEC issued an investor alert (in an attempt) to clarify these quandaries. Let’s review three takeaways from the memo.

SEC Cryptocurrency Alert Point #1: The SEC Is Open To Blockchain Opportunities

Sure, the Securities and Exchange Commission is a regulatory body, but they’re not opposed to market opportunities.

In its recent alert, the agency enthused that ICOs “may provide fair and lawful investment opportunities.” The memo, however, also warned that some ventures “can be used improperly to entice investors with the promise of high returns in a new investment space.”

SEC Cryptocurrency Alert Point #2: Some Investment Opportunities Fall Under The Securities Umbrella; Others Don’t

Are digital currencies securities? It’s the temporal chicken or egg dilemma of our, financial, times. And like the fowl-centric brain teaser, the answer remains elusive. Yes, various regulatory bodies and judges have deemed certain crypto-investment opportunities — particularly initial coin offerings — securities that are subject to financial regulations. However, officials have yet to establish a consensus, and virtual tokens aren’t necessarily considered securities in and of themselves — though many ICOs are.

The SEC ICO Investment alert advised:

“Depending on the facts and circumstances of each individual ICO, the virtual coins or tokens that are offered or sold may be securities […] subject to the federal securities law.”

SEC Cryptocurrency Alert Point #3: The DAO ICO Violated Regulations

In 2015, The DAO — a.k.a., The Decentralized Autonomous Organization — held an initial coin offering that netted about $150 million. Unfortunately, the best laid plans of mice and DAO went awry: hackers exploited a hole in the overlaying code — not the blockchain — and siphoned $50 million.

In its alert, the SEC made an example of the DAO ICO — ultimately deeming it in violation of securities regulations. Ars Technica succinctly summarized the SEC’s position: “If coin owners are promised voting rights in an organization or the right to a share of profits, that’s likely to be a security. By contrast, if users mostly buy tokens for a utilitarian purpose—for example, to buy network storage—it’s less likely to be a security.”

Connect With A Blockchain Legal Practice

Cryptocurrency rules are in flux. Details and jurisdictions matter. Our firm works with blockchain startups, token exchanges, and other types of businesses servicing the digital currency ecosystem. Get in touch today to begin the conversation.

Article Sources

Roof, K. (2017, July 25). SEC regulators are coming after ICOs. Retrieved September 18, 2017, from https://techcrunch.com/2017/07/25/sec-regulators-are-coming-after-icos/?ncid=mobilenavtrendLee, T. B. (2017, July 26). Using a blockchain doesn’t exempt you from securities regulations. Retrieved September 18, 2017, from https://arstechnica.com/tech-policy/2017/07/using-a-blockchain-doesnt-exempt-you-from-securities-regulations/

Popper, N. (2017, July 25). S.E.C. Issues Warning on Initial Coin Offerings. Retrieved September 18, 2017, from https://www.nytimes.com/2017/07/25/business/sec-issues-warning-on-initial-coin-offerings.html?_r=1

Investor Bulletin: Initial Coin Offerings. (2017, July 25). Retrieved September 18, 2017, from https://www.investor.gov/additional-resources/news-alerts/alerts-bulletins/investor-bulletin-initial-coin-offerings

The post Three Takeaways From The SEC Cryptocurrency Alert appeared first on Kelly / Warner Law | Defamation Law, Internet Law, Business Law.


Source: Kelly Warner Law

Washington Cryptocurrency Regulation: Registration and Disclosure Rules 0

Washington cryptocurrency laws“Cryptohating legislature.” A Reddit user coined the phrase after Washington passed a cryptocurrency regulation. An update to the Washington Uniform Money Services Act, many fintech businesses must now secure licenses, submit to disclosure requirements, and implement investor safeguard measures.

Washington Cryptocurrency Regulations: Registration, Disclosure, Consumer Safeguards

Washington State’s money transmitter bill — the Washington Uniform Money Services Act — now includes crypto-regulatory parameters. Moving forward, token exchanges must:

  1. Secure operating licenses from the Washington State Department of Financial Institutions;
  2. Submit to third party data audits; and
  3.  Adhere to a surety bond system.

The law doesn’t just apply to exchanges operating out of Washington State; instead, it applies to all exchanges that accept Washington State residents.

Many crypto enthusiasts didn’t take the news well, but Charles Clark, who helped draft Washington’s new rules, is surprised by the backlash. He reminded, recently, that the state issued similar guidance way back in 2014 when it published an alert highlighting FinCen’s position that exchanges should register with public banking authorities.

Clark also explained: “We had these old regulations for money transmitters in the state, and they were clearly meant for older business models. The virtual currency industry had issue with that. This gives them some clarification and guidance.”

Some Exchanges Flee State; Major One Stays

Several exchanges — like Kraken, Poloniex, and Bitfinex — are no longer allowing evergreen state residents to use their services. The popular Coinbase, however, decided to stick it out and comply with the regulations.

The Divided States of Crypto America

Some states are trying to attract blockchain startups by scrubbing regulatory roadblocks from law books. For example, New Hampshire recently updated its code to exempt blockchain and fintech businesses from certain registration requirements. Nevada, for its part, illegalized taxation on token transactions.

On the flip side of the token, other states like New York and now Washington — ostensibly more focused on consumer protection concerns — are taking a more cautionary approach and implementing registration and licensing requirements.

Connect With A Blockchain Lawyer

Kelly / Warner works with blockchain and fintech businesses. Whether you’re just starting or an established firm, we have the tools and team to assist with any contract negotiations, corporate governance, and litigatory needs. Let’s talk.

Article Sources

Atkins, D. (2017, August 01). New Bitcoin regulations shake up Washington state’s cryptocurrency industry. Retrieved September 16, 2017, from https://www.geekwire.com/2017/new-bitcoin-regulations-shake-washington-states-cryptocurrency-industry/

Althauser, J. (2017, July 28). Washington State Requires Bitcoin Exchanges to Secure Licenses. Retrieved September 16, 2017, from https://cointelegraph.com/news/washington-state-requires-bitcoin-exchanges-to-secure-licenses

The post Washington Cryptocurrency Regulation: Registration and Disclosure Rules appeared first on Kelly / Warner Law | Defamation Law, Internet Law, Business Law.


Source: Kelly Warner Law

The “All Natural” Marketing Conundrum: A Quick Overview 0

natural marketing“Natural.” Legally speaking, it’s a deceptively complex word. But, the Food and Drug Administration is trying to change that.

What Does Natural Mean, Legally Speaking? (The Jury Is Still Out.)

The FDA wants to “establish a meaningful definition for ‘natural’ so that [the] term would have a common consumer understanding, and [determine] whether ‘natural’ claims [should be prohibited] entirely on the grounds that they are false or misleading.”

Food advertising lawsuits involving the word “natural” have skyrocketed. According to a report by Perkins Coie LLP, 2015 saw 53 class actions involving “natural” and “all natural” food labels. Unfortunately, courts and regulatory agencies have yet to agree on a universal standard and definition.

92% Natural Is Not The Same As “All Natural”

Is it OK to use the phrase “all natural” or “100% natural” if the majority of a product is derived directly from nature?

According to the Federal Trade Commission, no it’s not. “‘All natural’ or ‘100 percent natural’ means just that—no artificial ingredients or chemicals,” Jessica Rich, a former director of the FTC’s Bureau of Consumer Protection, once commented.

And the commission has stuck to that standard. The agency once targeted a sunscreen company for using 100% natural, even though 8% of the formula was synthetic.

The Problem With The Word “Natural”

Richard Cleland, from the FTC’s Bureau of Consumer Protection,  explained the difficulty with using “natural” on food labels:

“You have different kinds of products that make natural claims, and the consumer understanding of the word natural may depend on what kind of product is being attached to [the term].”

Connect With A Marketing Lawyer

Knowing when to use “natural” is only one of the FTC’s marketing rules. Are you familiar with the others? If not, start with this handy list or promotional dos-and-don’ts.

Are you ready to speak with an attorney who helps businesses with legal marketing issues? If so, please get in touch. Our team is here and ready to help with any and all FTC and business consultation needs.

Article Sources

Long, J. (2017, June 20). FTC Official: Research Needed to Study Consumer Understanding of ‘Natural’. Retrieved September 13, 2017, from https://www.naturalproductsinsider.com/blogs/insider-law/2017/06/ftc-official-research-needed-to-study-consumer-un.aspx

The post The “All Natural” Marketing Conundrum: A Quick Overview appeared first on Kelly / Warner Law | Defamation Law, Internet Law, Business Law.


Source: Kelly Warner Law

Doubling (& Tripling) Down on Trademark Protection For Secret Menu Items–In-N-Out v. Smashburger (Guest Blog Post) 0

by guest blogger Alexandra Jane Roberts

Last week, California-based burger chain In-N-Out sued Denver-based Smashburger, alleging infringement and dilution of trademarks including DOUBLE-DOUBLE and TRIPLE TRIPLE (for, among other things, “hamburger sandwiches and cheeseburger sandwiches”). Smashburger recently applied to register TRIPLE DOUBLE and SMASHBURGER TRIPLE DOUBLE for sandwiches and restaurant services. The federal lawsuit follows on the heels of In-N-Out’s opposition to Smashburger’s applications, currently pending before the TTAB. In addition to asserting its registered marks against Smashburger, In-N-Out claims Smashburger infringes its common law trademarks as well. Its complaint does not precisely articulate which common law trademarks it has in mind, but does include the following in its statement of facts: “In-N-Out is…widely known for providing variations of its menu items to customize orders for providing an exceptional customer experience. Accordingly, In-N-Out’s customers commonly mix the DOUBLE-DOUBLE, TRIPLE TRIPLE, and QUAD QUAD menu names to form names to customize orders, including ‘Triple Double.’” (¶ 21).

A DOUBLE-DOUBLE at In-N-Out is just what you’d expect: two beef patties and two slices of cheese, with assorted condiments. A TRIPLE TRIPLE is three and three, and a QUAD QUAD (also an In-N-Out registered trademark) is four and four. The company also uses 2×2, 3×3, and 4×4, respectively. A TRIPLE DOUBLE at Smashburger comprises two patties and three slices of cheese.

Right about now you may be wondering whether all those terms aren’t merely descriptive or even generic for the burgers at issue, and thus unprotectable. A descriptive mark describes some attribute or characteristic of the goods or services with which it’s used, and “double double” and “triple triple” describe the number of patties and cheese slices in the burgers. But descriptive marks are protectable with a showing of secondary meaning, and DOUBLE-DOUBLE and TRIPLE TRIPLE have been used by In-N-Out since the 1960s and registered since the 1970s and 1980s respectively, giving them decades to acquire distinctiveness. What’s more, the marks are incontestable under Section 15, so they will be presumed valid and cannot be challenged based on mere descriptiveness (remember Park ‘N Fly?).

Smashburger could still invalidate the marks by proving they are or have become generic. But adjectives are typically found to be at least thinly descriptive, since they don’t name the genus to which the goods or services belong, and the doubling of each term (“triple triple” rather than “triple burger”) might lead factfinders to conclude the marks are capable of serving as source indicators. The USPTO treated Smashburger’s allegedly infringing marks, including TRIPLE DOUBLE, as inherently distinctive for burgers. Of course, the TTAB recently affirmed the USPTO’s refusal to register “footlong” for sub sandwiches; In-N-Out could be subject to the same fate as Subway if evidence suggests consumers understand “double double” and “triple triple” as generic phrases for double or triple burgers available from a variety of sources rather than just one.

And while an incontestable mark can’t be invalidated based on mere descriptiveness, it can still be challenged based on abandonment or nonuse. DOUBLE-DOUBLE is presumably safe, given its prominent placement on the menu board of every In-N-Out location. While names of menu items don’t make for particularly strong marks, plenty of precedent exists for granting them protection.

But TRIPLE TRIPLE is neither listed on the restaurant’s menu boards nor displayed on other signage. Nor does it appear as the name of an item on the restaurant’s “Not-So-Secret” menu, featured on its website and app and discussed on various blogs. It’s referenced only once on the Not-So-Secret menu in the text describing the item billed as “3×3”—text that’s only visible when site visitors hover over the item name (“Our 3×3® or Triple Triple® has three 100% American beef patties, hand-leafed lettuce, tomato, spread, three slices of American cheese, with or without onions, stacked high on a freshly baked bun”).

burger 1

The In-N-Out app is similar to the restaurant’s website but doesn’t appear to use TRIPLE TRIPLE at all, even in the description of the 3×3. While the company’s complaint generally alleges use of the relevant marks “on its menu, food packaging, advertising materials and promotional items,” I’m unable to find any examples of such use of TRIPLE TRIPLE, and an informal survey of friends who frequent the restaurant has not revealed any leads. In-N-Out’s complaint also alleges that its registered marks include menu items from its Not-So-Secret Menu that “are publicized and widely known and used by customers, whether by word of mouth or, more recently, by online communications like social media and blog posts.” The specimen on file with the USPTO from 2008 is an image of a small burger bag that features the words “TRIPLE TRIPLE.”

burger 2

But the same friends tell me they’ve never seen or received such a bag, so it’s possible the bags are no longer in use. One of my students sent his sister to In-N-Out in Westwood to investigate; she came back with photographic evidence that the 3×3 is not consistently packaged in bags bearing the TRIPLE TRIPLE mark (shown here: her 3×3 in a Double-Double bag).

burger 3

While the complaint seems architected to disguise or gloss over it, actual use of TRIPLE TRIPLE as a trademark for burgers appears weak. In order to warrant protection, matter must be used on or in connection with goods or services that move in interstate commerce, and it must be used in such a way that consumers will recognize it as serving a source indicating function. I’ve spent the past year researching and writing about the latter requirement, “use as a mark.” Notwithstanding the circle-R sign (®), the company’s use of TRIPLE TRIPLE on its website comes up short—the mark appears in tiny font, embedded in descriptive text, and it’s not set apart from the surrounding words or images in any way, so it likely fails to meet the statutory requirement. The 2008 use on burger bags likely does satisfy use requirements, even if consumers don’t see it until they’ve already made their purchase—TRIPLE TRIPLE is large, bright, and featured prominently on the bag. But if that use no longer persists, a court might find that the mark fails to function as a trademark or that In-N-Out has abandoned its use.

Finally, the question remains whether use of a mark by the public will suffice to support a producer’s rights in that mark. In-N-Out alleges that it “uses the Registered Marks…through customer use” (¶ 20). And courts and the USPTO have occasionally applied public use doctrine to find that the widespread use of a mark by the public, like “Coke” for Coca-Cola, “Mac” for Macintosh computers, or “the Evil Empire” for the Yankees, can give rise to protectable trademark rights or at least provide adequate foundation to prevent a competitor from making use of a confusingly similar term. In those cases, the public stands in as surrogate user, and its early, organic use inures to the benefit of the producer.

But trademark rights remain dependent on a sufficient segment of the public regarding the phrase or nickname as a source indicator. That doctrine is a stretch here if consumers are using “triple triple” and “triple double” simply to order triple burgers, as it does not necessarily indicate that the phrases serve a trademark function or that use of similar marks by someone else would cause confusion. And public use doctrine is almost always applied to consumer-generated brand nicknames, rather than names for new products that consumers themselves create. If the “triple double” is a crowd-sourced secret menu item that In-N-Out doesn’t actively promote (or even provide information about consistent with industry regulations), it’s easily distinguishable from those nickname cases. On the other hand, the public’s use may be far more extensive than what I can see with a quick search—I left California in 2005 and I haven’t eaten a hamburger since 2002, so I’m not representative of the fans who troll social media for burger rankings and secret menu tricks. The public’s use in combination with the company’s incontestable registration could obviate an objection that In-N-Out does not itself use the mark in commerce.

Assuming the registered marks In-N-Out asserts are valid, the company still must establish that Smashburger’s marks create a likelihood of confusion among consumers. (Smashburger probably can’t avail itself of a fair use defense given its four pending ITU applications, in which it attests to its plans to use TRIPLE DOUBLE and SMASHBURGER TRIPLE DOUBLE as trademarks for burgers and restaurants; statutory fair use requires that a defendant’s use be “other than as a mark”.) While the products and channels of trade are nearly identical, the descriptiveness of the marks may weigh in Smashburger’s favor in an infringement analysis. More importantly, both companies use their marks for menu items, not as the names of restaurants or other primary branding devices. In a traditional infringement case, we’re concerned about members of the public grabbing the wrong item off the shelf, or being lured into a store or restaurant that’s not the one they had intended to enter. Once a customer is inside a Smashburger establishment, he knows where he is and where he isn’t. A menu item with a name similar to a menu item at another restaurant could conceivably create a misimpression of affiliation or sponsorship, but it’s a lot less likely to do so than a confusingly labeled supermarket or drugstore purchase. It’s also less likely to deceive than a restaurant fulfilling orders for Coke by serving Pepsi without warning “no Coke; Pepsi.” And Smashburger is a major chain with its own following, brand personality, and décor. That background distinguishes this case from In-N-Out’s successful 2007 suit against copycat Chadders, which imitated In-N-Out’s trade dress in addition to fulfilling orders for menu items when customers ordered using In-N-Out item names (2007 WL 1983813).

In-N-Out also asserts dilution claims, some risible. It alleges tarnishment, which usually applies to the use of a mark nearly identical to a famous mark in association with sex, drugs, or some other tawdry subject, and occasionally extends to include shoddy, low-quality products. In-N-Out explicitly avers that Smashburger competes with it in the same market at the same price point and nowhere alleges that Smashburger outlets are “drug-infested dens” (as Trump recently deemed New Hampshire). Its blurring claim is only slightly less implausible. First, under the TDRA, a mark must be famous among the general consuming public to be capable of being diluted; In-N-Out only has restaurants in 6 states. In-N-Out claims that “[i]t is an iconic brand, and its products and services have acquired renown and a fiercely devoted fan base throughout the country” (¶ 10). But that iconic brand is In-N-Out, not Double-Double or Triple Triple. While consumers in states without the restaurant may well have heard of the restaurant or visited it while traveling, and the IN-N-OUT trademark itself may be famous nationwide, establishing the specific marks in question—essentially names of menu items available in just 6 states—are famous in every state of the union will be quite a challenge. I’m skeptical TRIPLE TRIPLE has secondary meaning on the east coast, let alone fame. And second, the famous mark must be registered and the defendant’s mark must be similar if not identical. TRIPLE DOUBLE is not that similar to either DOUBLE DOUBLE or TRIPLE TRIPLE, and even if customers were found to use “triple double” in a way that supported granting In-N-Out rights in the phrase, it’s still neither registered nor famous among the general consuming public.

In-N-Out is known for policing its marks. Some have called it a trademark bully for its aggressive enforcement against small independent restaurants and non-competitors. The complaint against Smashburger, in some places, seems to suggest that In-N-Out wants to assert exclusive rights in the very concept of a burger with a particular patty-and-cheese combination—why else would it discuss and append registrations for its 2×2, 3×3, 4×4, and QUAD QUAD marks? Trademark protection was never intended to grant monopoly rights on cheeseburger configurations, generic terms for them, or phrases used for menu items that don’t actually function as source indicators. In-N-Out has a steep climb ahead if it pushes forward with this litigation, and it may be in for a surprise if Smashburger chooses to counterclaim seeking cancellation of one or more of In-N-Out’s trademarks.


Source: Eric Goldman Legal