Trademark Enforcement: The Creative Enforcement with Cease-N-Desist

Foley Hoag –  Joshua Jarvis

Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback.

In this “Creative Trademark Enforcement” series of blog posts, I’m continuing to explore some of the more interesting takes on this approach, from singing lawyers to “pop-up” bars and beyond. In the most recent Part IV of the series, I discussed a craft brewery’s misguided tribute to an AB Inbev catchphrase – but one that ended in delight instead of damages. This time, I’ve got another craft brewery dispute with a happy ending – especially if you like puns.

Homage to a California Staple

It’s no secret to craft brewers – and the trademark lawyers that advise them – that picking a clever but available brand name for a new brew can be a tall order.  And sometimes a brewer needs a little inspiration. 

Recently, the San Francisco-based Seven Stills Brewery – no stranger itself to clever beer names, at least one of which may or may not pay homage *cough cough* to another brand – teased the launch of a new brew that borrowed heavily from the name and trade dress of its California neighbor, the well-known In-N-Out Burger.  The accused ale, a “barrel-aged neapolitan milkshake stout,” was set to feature not only a similar name, IN-N-STOUT, but also the same font, and the exact yellow and red “left turn” angled arrow logo and red palm tree trade dress that graces various In-N-Out Burger locations and products.

In-N-Out’s Spirited Response

Given the similarity, it’s not surprising that In-N-Out felt its hand was forced, and it sent Seven Stills a cease-and-desist letter in short order.  Perhaps taking a cue from AB Inbev, however, the letter was serious and playful at the same time, featuring no fewer than ten beer and liquor puns.  Can you spot them all?

Apparently expecting the demand letter, Seven Stills was a good sport, and posted the image above to its Instagram page.  It also immediately shifted gears and rebranded the stout to Liquid Self.

As we’ve come to expect, In-N-Out’s classy cease-and-desist move did its job – it prevented the release of a potentially infringing product before release, it was appreciated by the target (and, judging by the Instagram page, its beer-drinking customers), and it scored In-N-Out a bunch of good publicity.  Not a bad day for the In-N-Out Burger General Counsel’s office.

It’s not all good news, though!  Now we’ll never have the opportunity to order an In-N-Stout ANIMAL^® STYLE.