In-N-Out Trademark Tourism Allows It To Keep Mark For ‘Double-Double’ In Canada

In-N-Out is In-N-At it again. In our many posts on the burger chain, we've discussed the company's habit of what I'll call trademark tourism. In posts that have focused primarily on its trademarks in Australia, we've detailed out how In-N-Out will conduct a popup restaurant in these countries that it otherwise has zero brick and mortar presence in, usually once a year or so, simply to satisfy the use-in-commerce requirements to retain its registered trademarks. This allows the company to lock up language and branding in a country it refuses to operate in generally, other than these bullshit events designed solely to allow it to keep these trademarks active and registered.

It should be obvious to everyone that this sucks. It wasn't the point of trademark laws in general and it's a naked attempt to game the system on a technicality. But In-N-Out keeps getting away with it, and not just in Australia.

Way back in 2019, Tim Horton's asked asked Canada's trademark office to review the trademark In-N-Out has for double-double," the chain's famous burger order. As in Australia, In-N-Out has no permanent storefronts in Canada. But, just as in Australia, the company shows up with its popup trucks every once in a while to keep its registered mark.

In 2019, Tim Hortons Canadian IP Holdings Corporation requested a review of In-N-Out's ownership of the trademark. If a company holds a trademark, but cannot show that it has been used over the last three years, the trademark can be expunged, leaving the word or phrase free game for another user to register. But the Canadian Intellectual Property Office decided that In-N-Out Burger had been actively using the trademark, because of the company's annual burger sales at the Langley Good Times Cruise-In.

In addition to using its cookout trucks in certain locations in the United States, the owner [In-N-Out Burger] has also used its cookout trucks to sell food products in Canada for many years," wrote Timothy Stevenson, a member of the Trademarks Opposition Board, in a Nov. 1 ruling.

There's a reason Tim Horton's has an interest in this particular trademark. In Canada, a double-double is best known as a coffee order with two creams and two sugars.

Now, Tim Horton's probably doesn't want to risk a trademark infringement suit from In-N-Out, especially when the latter doesn't even truly operate within the country other than this one event it does. An event in which In-N-Out makes no profit, by the way. The company covers its own costs and then the rest goes to charity. There's nothing wrong with that, obviously, but I'm driving the point here that In-N-Out isn't clinging to this trademark because it wants to do business in Canada. It clearly doesn't.

The annual burger sale is not for profit. It covers its costs, and then any money above that goes to the Cruise-In Society, which distributes the cash to local charitable causes.

But according to the trademark office, that doesn't matter. All that In-N-Out needs to do is participate in this charity event once every three years and it gets to keep its trademark.

Again, that isn't what trademark laws are designed for. The public is very much not being served by allowing the company to retain the mark. For 364 days a year, there's no public confusion even possible in Canada.

Trademark tourism of this kind simply shouldn't be allowed, full stop.