Hamburger maker claims shoe maker is causing consumer confusion. IN-N-OUT v. PUMA

A trademark is something which indicates to consumers the identity of a producer of a product. Traditionally trademarks are thought of as a word phrase or symbol, but anything that serves the purpose of identifying the source of a product can qualify for trademark protection. United States trademark law is a hybrid of federal statutes, state law and common law principles. When a product producer starts using a trademark to brand goods, the producer is granted certain rights to the trademark. A trademark user can register their trademark with the United States Patent and Trademark Office to be strengthen the rights associated with the trademark, however registration is not a prerequisite to begin using the trademark to brand goods and gain some right to the trademark. The first person to use a trademark to brand products is referred to as the senior user, subsequent users of the same trademark are known as junior users. If a junior trademark user brands products in a way that causes consumers to confuse the junior user’s products with the senior trademark user’s products, that can be considered trademark infringement. A trademark owner who feels that their trademark is being infringed upon can attempt to stop trademark infringement by filing a lawsuit which requests an injunction and get monetary damages for trademark infringement which has occurred.

The key to trademark infringement is the association consumers make between a trademark and the producer of a product. A trademark is only as strong as the association held by consumers. It is possible for two companies, in different industries, to use similar trademarks on different types of products without infringing on each other’s trademarks. If the products are different enough that consumers will not confuse one company’s products for another company’s products, trademark law will allow the two different trademark users to co-exist. However, a senior user of a trademark still has priority to a trademark, a junior trademark user must be careful to minimize the likelihood of consumer confusion even if the two trademark users are in different industries.

A case which involves the use of trademarks on products in different industries is IN-N-OUT BURGERS, v. PUMA NORTH AMERICA, INC., 8:19-cv-00413 (C.D.CA 2019). The plaintiff in this case is In-N-Out a quick service restaurant, based in California, that operates more than 340 locations in the United States. The plaintiff was established in 1948 and has featured a red and white pattern combined with a yellow arrow since 1954. The plaintiff’s packaging is frequently decorated with small red palm tree pattern. The plaintiff registered the palm tree pattern as a trademark for various food products in the 1980s, but not for clothing. The red, white and yellow color pattern has been used consistently on the plaintiff’s food packaging for several decades. In 1992 the plaintiff began selling clothing which feature a red, white and yellow palette, some items feature the plaintiff’s small red palm tree pattern. Since 2015 the plaintiff has sold several million pieces of clothing. The plaintiff’s clothing is sold exclusively in the plaintiff’s restaurants and the plaintiff’s trademarks have not been licensed to any third party.

The defendant, Puma, sells shoes, shirts, and other apparel in the United States. In February 2019, Puma launched two new shoe products called the Cali-0 Drive Thru and California Drive Thru. A picture of the defendant’s shoes can be found at the top of this article. The defendant’s shoes have a red white and yellow palette and feature small red palm trees on the laces. The defendant’s advertisements say that the shoes are intended to pay homage to the classic California burger diner. The defendant’s advertisements frequently feature the defendant’s products placed next to hamburgers or other types of fast food.

The plaintiff filed a lawsuit claiming trademark infringement and trade dress infringement. The plaintiff alleges that the defendant is deliberately attempting to associate itself and its products with the plaintiff. As evidence of actual consumer confusion the plaintiff submitted several social media posts where consumers refer to the shoes as Puma In-N-Out shoes.

The plaintiff makes a strong for trademark infringement. Even though the plaintiff’s trademarks are registered for use in the food industry, the plaintiff is selling clothing bearing the trademark and the defendant’s advertisements seem to create an association with California fast food restaurants. The defendant will have a difficult time rebutting the plaintiff’s allegations.

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