Trade Dress Confusion: In-N-Out versus Five Guys

I am a native of arguably the birthplace of fast food.  McDonalds was born on North E Street in San Bernardino, and Glenn Bell’s pre-Taco Bell restaurants started in San Bernardino.  I am very familiar with local Inland Empire chain (based in San Bernardino)  Baker’s Drive-Thru, as my office in the Redlands Executive Suites shares a parking lot.  Del Taco started in Yermo, and Carls Jr., Wienershnitzel and Jack in the Box all started in Southern California.  And of course, In-N-Out in Baldwin Park.

In today’s Los Angeles Times,on Page B-1 in an article by Sharon Bernstein is a discussion of  East Coast burger chain Five Guys moving directly into In-N-Out’s motherland.  I’ve long enjoyed  In-N-Out.  I’ll never forget visiting the store on Second Street in San Bernardino (which will soon move to Fifth Street in San Bernardino) after seeing the Cure at the Rose Bowl.  When I was an undergraduate at the University of California, Berkeley, we at least on one occasion drove to the only In-N-Out then in Northern California in Gilroy.  By the time I graduated law school at Santa Clara University School of Law, they started to open throughout the Bay Area.  I stumbled upon the City Council Meeting in Sunnyvale on cable television approving the Conditional Use Permit for the store in Sunnyvale, a City that did not want new drive-throughs.  One opened approximately 300 feet from my front door.  Alas, I had graduated from law school and soon moved back to the Inland Empire.  In the Inland Empire, long home of existing In-N-Out Burger restaurants, municipalities like the City of Highland and the City of Rialto seek new stores to help put them on the map.  When I was Assistant City Attorney for the City of Redlands, one former council member sometimes publicly wished aloud for an In-N-Out in Redlands.  I can second that motion.
I first stumbled across Five Guys in Northern Virginia in 2007.  The first thing I noticed is that it appeared to be taking the “look and feel” of In-N-Out with Five Guy’s distinctive red and white color scheme, including red and white checkerboard tiles.  I didn’t eat at a Five Guys until last year in a store near Biloxi, Mississippi.   There are some key differences between the quality of  the two, particularly the expanded menu at Five Guys.

The look and feel of a restaurant can be protected as “trade dress.”  This protection derives both from the Federal Lanham Act and common law trademark.  Trademarks registered by In-N-Out (found at the United States Patent and Trademark Office searching for “In-N-Out”), include the word mark In-N-Out for a variety of goods and services classes, the arrow and rectangle  found on their sign and packaging , and the “mark [comprising] a stylized rendering of a continous band of palm trees above several continuous wavy lines which suggest ocean waves.”

In-N-Out has always vigorously defended its trademarks in court and at the United States Patent and Trademark Office.  I remember a San Bernardino based chain called “Luv’m Burgers” which I was told was shut-down by In-N-Out a long time ago, though I was unable to find a trace of such a suit on the internet. In-N-Out has stopped people from using the mark “In-N-Out” in other trademark classes.   In-N-Out sued copycats, such as Nicky’s In-N-Out Gyros.  One of the key benefits of federal trademark registration is nationwide protection, even against the aforementioned Nicky’s, which was in Chicago.

In-N-Out also was able to get a temporary restraining order against Chadders, a Utah chain, for using some of In-N-Out’s federally-registered marks.  The order, which can be found , states in pertinent part:

“In-N-Out has federally registered trademarks in the names Protein® Style Burger, Animal® Style Burger, 3 x 3® Burger, 4x 4® Burger and Double Double®.2 In-N-Out claims, as its trade dress; simple red-and-white menu boards with a plain type font and red border and lettering, a red-and-white color scheme with yellow accents on the exterior and interior of its restaurant, including use on walls, tiles, and seating structures, a gray and white tile checkerboard floor in its interiors, exteriors with a “California” tile roof (featuring orangepavers), and employee uniforms with red aprons and red hats or visors. In-N-Out Burger serves food in what it alleges is a distinctive manner, which it alleges Chadders also uses.”  In-N-Out Burgers, A California Corporation v. Chadders Restaurant, et al., United States District Court for Utah, Central Division, 2:07-CV-394 TS, Memorandum Decision and Order, June 29, 2007 by U.S. District Court Judge Ted Stewart.  From the order, the Court granted the Temporary Restraining Order regarding the registered trademarks, but did not grant the Temporary Restraining Order regarding In-N-Out’s  trade dress claims.

The order focused on the following language from Clicks Billiards, Inc. v. Sixshooters, Inc.. 251 F.3d 1252, 1257-58 (9th Cir. 2001) : “To sustain a claim for trade dress infringement, [plaintiff] must prove: (1) that its claimed dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s product or service creates a likelihood of consumer confusion.”  I was unable to find if In-N-Out was able to succeed on the merits of the trade dress claims after the Temporary Restraining Order was denied in part.

However, there is a Youtube video which can help you make your own determination about In-N-Out’s trade dress claims against Chadders.

How about Five Guys?  If you search for “trade dress” “In-N-Out” and “Five Guys” in Google, you get others whose initial impression that Five Guy’s trade dress is an In-N-Out rip-off.   In this blog, the author states “I had time to soak in the red-and-white “trade dress” of In-N-Out, which reminded me a lot of the Johnny-come-lately look of Five Guys.”  In this comment on another site, the author says “Five Guys is no In-N-Out (ignoring the similarity in trade-dress), but their cheeseburger with the works and hot sauce ( which is more “tangy” than “hot” ) is outstanding.”

A plaintiff has to prove that the trade dress is non-functional.  In-N-Out’s red and white color scheme, including the checker scheme, with yellow accents is probably not functional.  You can have higher contrast color schemes for the function of readability.  I would argue that the color scheme does have a source identifying role.  The “likelihood of confusion” prong probably is not met, however, because even though people recognize that Five Guys is trying to be like In-N-Out, you know that a Five Guys is not an In-N-Out.   You can’t get a hot dog in In-N-Out, and hopefully, you never will be able to.  As soon as you see the peanuts in Five Guys, you know you’re not going to be able to order a Double Double Animal Style with a Neapolitan Shake and Fries Well.  The Five Guys I have seen are in strip malls, while almost all In-N-Outs have drive throughs.  Five Guys aren’t meticulously clean like an In-N-Out.  Anyone paying attention can tell the business model is different, too.  Five Guys franchises, and has expanded from its base almost as quickly as the ill-fated Krispy Kreme.  In-N-Out Burger  is still family owned, and has expanded slowly and cautiously (though you can argue the stand-alone Texas expansion may not be wise).  I think the lack of yellow in the scheme is a key difference.  Also, even though the comments above recognized the difference between the two chains despite the similarity of trade dress.  Yes, Five Guys is an imitator, but consumers can see that they are an obvious imitator.

Update 4/18/2011:

For those of you looking for the Redlands Five Guys, according to the Facts, it is opening on April 20, 2011 and is located at 10400 Alabama St. (in the Redlands Town Center).  I believe it is near Noodle 21.

The information you obtain at this blog is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation.

Copyright 2011 Michael Reiter, Attorney at Law

The information you obtain at this blog is not, nor is it intended to be, legal advice. No attorney-client relationship is established by reading or commenting on this blog. You should consult an attorney for advice regarding your individual situation.

Michael Reiter is a partner with Cole Huber LLP

2855 E. Guasti Road, Suite 402

Ontario, CA 91761