Double-DoubleTrademarkTrouble.PDF

Double-Double Trademark Trouble: In-N-Out and CaliBurger’s International Burger Brawl Bradley Sova* INTRODUCTION 53 I. BACKGROUND 56 A. Expansion Strategies 56 B. In-N-Out Burger’s IP History 57 C. Chinese IP Landscape 58 1. Historical Development of the Trademark 59 2. Modern Trademark Law 60 3. Infringement and Other Problems 61 4. Positive IP Trends 63 II. THE AMERICAN DISPUTE 65 III. THE INTERNATIONAL TRADEMARK REGIME AND DOMESTIC DANGERS 68 A. Territoriality the Madrid Agreement 68 B. First to Register Well-Known Marks 69 C. Trademark Squatting 75 D. Loss of Control Forced Market Entry 78 IV. LESSONS FOR BUSINESSES 80 A. Register and Enforce Your Trademarks! 81 B. Promote Your Trademarks! 82 V. CONCLUSION 83 EPILOGUE 84 INTRODUCTION In September 2011, large, unidentified signs appeared in Shanghai’s Jing’an Temple District advertising the imminent arrival of Double-Double, Animal Style, and Protein Style burgers—specialties of the California-based chain, In-N-Out Burger.1 The signs contained * The author is a J.D. candidate at the William S. Richardson School of Law at the University of Hawai‘i at Mānoa, and an LL.M. candidate at the Tsinghua University School of Law. He would like to thank his friends, teachers, colleagues, and loved ones for making all of his achievements possible. In particular, the author would like to thank Professor Julie Minn for first spurring and encouraging his interest in China and Professor Alison Conner for actively supporting this interest during law school. The author can be reached for comment at bsova@. 1 Carolyn Surh, Staying Ahead of Copy Cats, QSR MAGAZINE, Apr. 10, 2012, /reports/staying-ahead-copy-cats. A “Double-Double” burger consist