What’s on the trademark tap?

Creating and cultivating a strong brand is pivotal to business success. Protecting that brand is equally important to sustain the goodwill and reputation among customers. Trademark law allows you to protect those names, logos, and other commercial signifiers used to identify your brand and allows you to stop others from using your mark, or a confusingly similar one. If you discover another company or individual is infringing on your mark, what do you do? Sending a cease and desist letter is the opening shot in a trademark dispute. The trademark owner (normally the first user of the mark) requests that the infringer (referred to as the “junior user”) stop all infringing activity.

Restaurant chain, In-N-Out Burger, recently found out that a California based brewery concocted a new Neapolitan milkshake style beer called “In-N-Stout,” which encompasses a design resembling the popular burger chain’s logo and cup featuring palm trees and its signature yellow arrow. According to the burger chain, the branding and logos of this new beer infringed its registered trademarks, so they sent out a cease-and-desist letter.

Seven Stills Brewery & Distillery, the recipient, posted a picture of the letter on Instagram showcasing the pun filled language from In-N-Out Burger, including “hop to action in order to prevent further issues from brewing,” “attempting to clearly distill our rights,” “Please contact us as soon as possible, so this does not continue to ferment” and others below.

Now, maybe the In-N-Out Burger attorneys were enjoying a cold one while preparing this light-hearted demand letter? Whatever the case, kudos to them for lightening up what could have otherwise been heavy legal action. Since the letter had been received, Seven Stills agreed to change its beer’s trade dress to remove In-N-Out’s branding from the can.

According to Instagram, the full letter reads:

Dear Seven Sills Brewery & Distillery,

We at In-N-Out Burgers (“In-N-Out”) received multiple reports of your “In-N-Stout Beer” featured on your social media pages. The In-N-Stout Beer label features In-N-Out’s trademarks including our palm tree and arrow logos along with a substantial similarity to In-N-Out’s brand name. Based on your use of our marks, we felt obligated to hop to action in order to prevent further issues from brewing.

In case you are not already aware, In-N-Out owns multiple trademark registrations in these marks. As you may expect, we tap into a lot of effort in protecting our marks, which includes limiting their use by others.

Please understand that use of our marks by third parties ales us to the extent that this could cause confusion in the marketplace or prevent us from protecting our marks in the future. We hope you can appreciate, however, that we are attempting to clearly distill our rights by crafting an amicable approach with you, rather than barrel through this.

Accordingly, we request that you refrain from further use of In-N-Out’s marks by not selling or promoting items featuring our marks, and removing images of “In-N-Stout” and any other items featuring our marks from your website and social media pages. Please contact us as soon as possible, so this does not continue to ferment. Thank you for your time and consideration, and we look froward to resolving this in good spirits.

An example of an entertaining and effective cease-and-desist letter that was done in good spirits. Beer does tend to get the creative juices flowing, coincidence or not?