Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

The International House of Pancakes has a filed (.PDF) a trademark lawsuit in U.S. District Court in Los Angeles against a Kansas City, Missouri based religious group that calls itself the International House of Prayer over the acronym "IHOP."

The pancake house is going after the church group for trademark dilution and trademark infringement. If you just clicked my link over the word acronym you would've found out they aren't the only one using IHOP.

While the two houses have practically nothing in common -- it's a stretch to say that the House of Prayer's use of this mark has confused anyone that is looking for a place to eat breakfast, there is no question that they share the same initials and similar web address IHOP.com (Pancakes) and IHOP.org (Prayer).

The first cause of action is for infringement based on likelihood of confusion (15 U.S.C. § 1114(1)). Depending how the court weighs the below listed factors will determine whether or not this is a good cause of action.

"Likelihood of confusion" is usually the defining test in deciding whether a claim for trademark infringement is valid.  The question to be answered to determine if there is a likelihood of confusion is

whether a "reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the goods or services bearing one of the marks." Dreamworks Prod. Group v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998).

There are eight factors courts may consider in determining whether a likelihood of confusion exists between the goods or services. This is known as the Sleekcraft test, (AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979):

1. Strength of the mark;
2. Proximity or relatedness of the goods;
3. Similarity of the marks (especially in sight, sound and meaning);
4. Evidence of actual confusion;
5. Marketing channels;
6. Type of goods and purchaser care (meaning how much care does a purchaser take before buying the product);
7. Intent when choosing the mark; and
8. Likelihood of expansion of the product lines.

Without going through each factor I don't think anybody's really confused between a House of Prayer and a House of Pancakes!

There is no similarity of goods and nobody is confused that either one of these companies have anything to do with each other. Although it is unnecessary to show actual confusion to establish likelihood of confusion.

There is no reason why two diverse companies can't share the same trademark.  I often say to clients when searching for the availability of a trademark they wish to register: why do you think they have Domino Sugar and Domino's Pizza? What about Ford Motor Co. and Ford gumballs?

I just performed a quick search on the USPTO trademark search page for the trademark FORD and found 1063 marks using the letters "FORD."  I would think IHOP would have a better case against the THE ORIGINAL PANCAKE HOUSE® for a confusingly similar mark.

I think their cause of action for dilution has a much better chance of success. The Federal Trademark Dilution Act of 1995 expanded the scope of rights granted to famous and distinctive trademarks under the Lanham Act. Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a mark. Instead, all that is required is that use of a "famous" mark by a third party causes the dilution of the "distinctive quality" of the mark.

The first International House of Pancakes restaurant opened in Toluca Lake, California in 1958, and in 1960 the company began to expand through franchising. In 1973 a marketing program formally introduced the acronym “IHOP.”

International House of Pancakes' claims the international House of Prayer selected and adopted the International House of Prayer name, knowing it would be abbreviated IHOP and they intended to misappropriate the fame and notoriety of the household name IHOP to help promote and make recognizable their religious organization.

The International House of Prayers' use of IHOP began long after the International House of Pancakes’s IHOP mark became famous. The religious group, which promotes its belief in daily, continuous prayer, has drawn thousands of people to Kansas City since it opened 10 years ago.

International House of Pancakes alleges in it's law suit:

IHOP mark is distinctive and famous within the meaning of 15 U.S.C. § 1125(c)(1). International House of Prayer acts are likely to cause dilution by blurring International House of Pancakes famous IHOP mark and otherwise have impaired the distinctiveness of this trademark. International House of Prayer willfully intended to trade on the reputation of International House of Pancakes famous IHOP mark and to cause dilution of International House of Pancakes famous IHOP mark.

It seems like dilution is their best argument. I just wonder why it took 10 years for them to file suit. There is another equitable principle in law called "laches" where if you don't enforce your rights in a timely manner it can result in any claim's being barred.  Don't you think if someone uses a trademark for 10 years it would be unfair to make them stop using their name?

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How do you protect your intellectual property? What is intellectual property? Is a special sandwich that you make better than anybody else intellectual property? Imagine you are the owner of a new restaurant who has created a new edible masterpiece. And subsequently, to your surprise, you discover that a copycat sandwich is being made across the street, without your permission.What do you do? What are your remedies?

In a new television commercial, Burger King's mascot breaks into the headquarters of McDonald's and steals the recipe to the Egg McMuffin.

I don't think they can register the work with the U.S. Copyright Office and obtain a certificate of copyright. Can they file an application for patent registration of the sandwich structure?

Remember for something to be patentable subject matter it must be a new, useful and a non-obvious improvement over something that's already out there. You don't see too many patents on food recipes and sandwiches. Maybe a design patent (.PDF), but I doubt that will give them much protection.

It may be argued that the business conduct of Burger King in this instance is actionable under federal unfair competition provision of the Lanham Act. While the Lanham Act, in general, focuses primarily on obtaining, maintaining, and enforcing trademark and service mark rights, Section 43(a), allows for suits for false designation of origin. But I don't think there is a false designation, Burger King comes right out and says we're making our own version of this old sandwich.

And it's not a copy of a trade secret (like the McDonald's special sauce) so I don't think there's any grounds for McDonald's to bring a suit. There is probably not much McDonald's can do to stop Burger King from making their version of the egg McMuffin.

What is protectable is the brand name or the trademark. What Burger King is tacitly saying in this clever breakfast commercial is that, McDonald's doesn't own the rights to eggs, sausage, cheese or English muffins. McDonald's owns the trademark "Egg McMuffin(.PDF)."

John DeVore, recently wrote a Special article to CNN entitled "Big burger boys burgle breakfast." about the commercial showing how Burger King's new BK Breakfast Muffin Sandwich's is just a copy of the classic Sausage McMuffin.

But are McDonald's executives upset with this campaign? Have lawyers been rallied and accusatory calls been made?"We haven't received any direct feedback from competitors," said Brian Gries, Burger King's vice president of marketing impact. Gries further defends his company's choice to be up-front about the similarities between the BK Breakfast Muffin and the McMuffin, saying, "We are not above taking a product that we know customers like and delivering it to our guests at a great price."

I love the guile of Burger King making a full admission in the commercial that they are copying this sandwich. I would love to see the internal memos from the lawyers arguing about whether or not they should allow this commercial to air. It is not like McDonald's has not been involved in a number of lawsuits involving trademark issues in the course of its history. But I think if McDonald's brings a lawsuit in this instance it would fuel of a lot of bad press and they would have little chance of success.

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