A U.S. burger chain will continue to own the trademark to the phrase “double-double” in Canada, largely because of its yearly visits to a Langley charity car show.
Since 2004, In-N-Out Burger, a California-based restaurant chain with no Canadian outlets, has owned the Canadian trademark on the phrase double-double, with the hyphen between the two “doubles.”
That’s despite the fact that its most well-known usage in Canada is for a coffee with two creams and two sugars, and the words are popularly associated with orders at the Tim Hortons chain. In-N-Out doesn’t have any permanent outlets north of the Canadian border.
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.
Tim Hortons argued during the trademark hearing that the sales were “token,” but Stevenson disagreed.
He cited In-N-Out’s participation in every Cruise-In from 2008 to 2019, and the volume of double-double burgers it sold.
Since trademark challenges are based on the three years before the challenge was made, the 2017, 2018, and 2019 years were particularly relevant, Stevenson wrote.
In each of those years, at least 1,390 double-double burgers were grilled and sold at the Cruise-In, more than 4,000 across the three years in total, all in wrappers emblazoned with the double-double name.
The ruling also noted that In-N-Out advertised in the Langley Advance Times Cruise-In supplements during those years.
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 that didn’t matter to the issue of trademark, Stevenson found.
In-N-Out Burger was absent from the Cruise-In last year due to pandemic border restrictions, and the car show didn’t take place at all in 2020.
But earlier this year, In-N-Out Burger returned to take part in the Cruise-In again.
The appearance of the burger chain’s truck-and-trailer mobile restaurant typically provokes long lines – in past years, Cruise-In organizers have even had to dissuade visitors from scalping the tickets that give access to the meals.
The annual volunteer-run car show was founded in Langley City in the late 1990s, and has taken place in downtown Aldergrove for the past several years.
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