In-N-Out Burgers – Good Food But Not Famous Enough For TTAB Opposition

The USPTO Trademark Trial and Appeal Board (“TTAB”) dismissed In-N-Out Burgers’ opposition to Fast Lane Car Wash & Lube’s application for a trademark containing the words “IN & OUT.”  In-N-Out Burgers v. Fast Lane Car Wash & Lube, LLC, Case No.: 91183888-OPP (TTAB, March 14, 2013) (available here).  Fast Lane Car Wash & Lube, LLC (“Fast Lane”) applied to register the mark “IN & OUT CAR WASH,” disclaiming “CAR WASH,” for automobile cleaning and car washing services.  Fast Lane asserted first use of the mark in April 2005 inj connection with two (2) car washing facilities located in Missouri.  In-N-Out Burgers (“Burgers”) opposed the registration on two grounds: (1) priority and likelihood of confusion; and (2) dilution.  Burgers argued that it had continuously used the mark “IN-N-OUT BURGERS” since 1948 in interstate commerce for its drive-through restaurants located in California, Nevada, Utah, Arizona, and Texas.  Burgers registered the IN-N-OUT BURGERS mark in 1978 for restaurant and carry-out restaurant services.  Over the years, Burgers obtained registrations “IN-N-OUT” mark registrations for a variety of goods and services, including its use as financial sponsorship of race cars and drivers and motor vehicle body repairing and painting.

Likelihood of Confusion

The TTAB analyzed the likelihood of confusion for Fast Lane’s “IN & OUT” mark used in connection with Burger’s motor vehicle body repairing and painting.  “Fame plays a dominant role in the likelihood of confusion analysis due to the fact that famous marks enjoy a broad scope of protection or exclusivity of use.”  In-N-Out Burgers, Slip Op. P. 15.  Burgers operates 262 restaurants in 5 states, and also sells gift cards, apparel, and collectibles through its stores, catalogs, and website.  Burgers is a private company and therefore did not disclose its annual sales figures, which is a factor to consider for famous marks.  Instead, Burgers relied on the testimony of its vice president and general counsel Mr. Wensinger.  However, Burgers offered no evidence to support Wensinger’s testimony, and the testimony indicated that Burgers’ sales made up only a limited market share of the general consuming public in the United States.  Burgers’ advertising is also limited to the geographical area where its restaurants are located.  “The record demonstrates that [Burgers] is the subject of very favorable and unsolicited attention from media sources and celebrities . . . While the evidence certainly indicates that [Burgers] has received favorable mention and recognition beyond its regional presence, it is not an indication of how significant that recognition is with the general consuming public overall.”  In-N-Out Burgers, Slip Op. Pp. 20-21.  As a result, the TTAB concluded that Burgers’ marks were not famous.

In considering the inherent distinctiveness and strength of the marks, the TTAB found that both Fast Lane’s and Burgers’ marks were suggestive by conveying a message about the respective services.  “That is, the marks both indicate to the prospective customer that the services are performed quickly, in particular that the customer can drive ‘in and out.’” In-N-Out Burgers, Slip Op. Pp. 23-24.  As a result, the marks are distinctive and any similarities between the marks are less likely to cause confusion.  The TTAB considered evidence presented by Fast Lane that numerous third parties used variations of the term “in and out” in marks.  However, the weight of this evidence was minimal because there was no evidence as to the extent of the use of these third party marks in commerce.

Turning to the similarity of the marks as to their appearance, sound, connotation, and commercial impression, the TTAB noted that Fast Lane’s mark “IN & OUT CAR WASH” completely incorporates Burgers’ mark “IN & OUT.”  As a result, both marks sound the same and share the same connotation of quick services.  “However, because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the test for similarity cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just on part of the marks.”  In-N-Out Burgers, Slip Op. P. 26.  Fast Lane argued that its mark, in its entirety, embodies a different commercial impression by the use of the words “CAR WASH.”  However, the TTAB found that the wording “CAR WASH” was generic and therefore not an indicator as to the source of Fast Lane’s services.  As a result, the TTAB concluded that the marks were similar, supporting a finding of likelihood of confusion.

The TTAB considered the similarities of the services offered by Fast Lane and Burgers.  “Here, [Fast Lane] is seeking to register its mark for ‘automobile cleaning and car washing; automobile washing; car washing; vehicle washing.’  Meanwhile [Burgers], through its licensee, is engaged in ‘motor vehicle body repairing and painting.’” In-N-Out Burgers, Slip Op. P. 29.  The TTAB concluded that the two services were not related.  In considering the channels of trade and classes of consumers, the TTAB presumed that Fast Lane’s services move in all channels of trade that are normal and available to all usual purchasers of Fast Lane’s services.  However, Burgers failed to prove that its services under its mark are related to Fast Lane’s services.  As such, the TTAB could not make the same presumption.  Finally, the TTAB considered whether there was any actual confusion over the marks.  Burgers acknowledged that there were no instances of actual confusion.  “However, as has been said many times, it is not necessary to show actual confusion in order to establish likelihood of confusion. . . Thus, while evidence of actual confusion would mitigate in favor of a finding of likelihood of confusion, the absence thereof is not as compelling in our determination.”  In-N-Out Burgers, Slip Op. Pp. 34-35.  As such, the TTAB concluded that Burgers had failed to show likelihood of confusion.

Dilution

Turning to Burgers’ claim of dilution, the TTAB stated that Burgers would have to show that its mark became famous prior to Fast Lane’s first use.  The TTAB noted that “the requirement for proving ‘fame’ for dilution purposes under Trademark Act § 43(c) is considerably more stringent than the proof of ‘fame’ in a likelihood of confusion analysis.”  In-N-Out Burgers, Slip Op. P. 36.  The TTAB did not find Burgers’ marks famous for the likelihood of confusion analysis, and therefore Burgers’ marks are also not “famous” for dilution purposes.  As a result, Fast Lane’s application would not dilute Burgers’ marks.  The TTAB dismissed Burgers’ opposition.

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