In-N-Out Burgers v. Pappas Restaurants, Inc,

Filing 1

COMPLAINT against Pappas Restaurants, Inc, (Filing fee $ 350 receipt number 0541-8884930) filed by In-N-Out Burgers. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit A - In-N-Out Burgers Restaurants, # 3 Exhibit B-D - In-N-Out Burgers Trademark Registrations, # 4 Exhibit E - Pappas Burger Restaurant Hobby Airport)(Warden, Thomas)

IN THE UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
)
)
IN-N-OUT BURGERS, a California
)
corporation,
)
)
)
Plaintiff,
vs.
)
)
PAPPAS RESTAURANTS, INC., a Texas )
)
corporation,
)
)
Defendant.
)
)

Case No. 4:11-CV-3996

Demand For Jury Trial

PLAINTIFF IN-N-OUT BURGERS’ COMPLAINT FOR INJUNCTIVE RELIEF
FOR FEDERAL TRADEMARK INFRINGEMENT AND
UNFAIR COMPETITION UNDER TEXAS LAW
For its Complaint, Plaintiff IN-N-OUT BURGERS (“In-N-Out”) alleges as follows:
1.

This is an action under the Trademark Laws of the United States, Title 15 U.S.C.

§1051, et seq., for trademark infringement pursuant to §32 of the Trademark Act of 1946 (the
Lanham Act), as amended, 15 U.S.C. §1114.
The Parties
2.

Plaintiff In-N-Out is a corporation duly organized under the laws of the State of

California, having offices at 4199 Campus Drive, Irvine, California 92612 (“In-N-Out”).
3.

Upon information and belief, Defendant Pappas Restaurants, Inc. is a corporation

organized and existing under the laws of the State of Texas, with its principal place of business at
13939 Northwest Freeway, Houston, Texas 77040 (“Pappas Restaurants”).

Jurisdiction and Venue
4.

The jurisdiction of this Court over the subject matter of this action is predicated

on 28 U.S.C. § 1338(a) as a federal question pertaining to trademarks. This Court has
supplemental subject matter jurisdiction over Plaintiff’s state law claim for unfair competition
pursuant to 28 U.S.C. §§ 1338(b), 1367(a) because this claim is so related to the federal
trademark infringement claim that it forms part of the same case or controversy under Article III
of the United States Constitution.
5.

Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b), (c)

because Defendant resides here, has committed acts of infringement here, and/or upon
information and belief has its regular and established place of business here, and is thus subject
to personal jurisdiction in this judicial district.
Background Facts
6.

In-N-Out has been engaged in the business of restaurant services and other

businesses since 1948, and currently has over 260 restaurant locations in California, Arizona,
Nevada, Utah and Texas.
7.

Since long prior to the acts of Defendant herein alleged, In-N-Out has

continuously used its BOOMERANG ARROW design mark in interstate and intrastate
commerce in connection with its advertising, promotion, offering to provide and providing of its
products.
8.

In-N-Out has offered its products under its mark, the mark having continuously

appeared on In-N-Out’s signage (see photos at attached Exhibit A) and on packaging for the
products themselves, in substantial advertising and promotion activities.

In-N-Out has

extensively used and promoted the mark such that it is closely identified with the goods and
services of In-N-Out and has gained widespread public recognition.
-2-

9.

Plaintiff is the owner of several federal registrations of its mark, including U.S.

Registration Nos. 1,646,401, 1,031,096 and 1,516,560. See attached information at Exhibits B D.
10.

These registered marks of In-N-Out are valid and subsisting, and incontestable,

and are prima facie evidence of In-N-Out’s exclusive right to use said marks in commerce
throughout the United States on the goods and services specified therein and other goods and
services related thereto.
11.

As a result of the care and skill exercised by In-N-Out in the conduct of its

business, the high quality of In-N-Out’s products offered under its mark, and the long running
extensive advertising, sale and promotion of In-N-Out’s products associated with the same, the
mark has acquired strong secondary meaning. The trade has used and now uses the mark to help
identify In-N-Out’s popular products as those of In-N-Out exclusively, and to distinguish them
from the products of others.
12.

Recently In-N-Out became aware of Defendant Pappas Restaurants’ highly

similar use of the boomerang arrow signage outside of its location in the Houston Airport. See
attached photograph of said signage at Exhibit E. In-N-Out, through counsel, directed letters to
Defendant and had discussions by telephone and email with Defendant’s attorney but no
satisfactory resolution was reached.
13.

The use by Defendant of In-N-Out’s mark is likely to cause confusion, mistake or

deception, as those encountering Defendant’s signage may mistakenly assume, at least initially,
that its restaurant is in some way sponsored, endorsed, approved by or connected with In-N-Out
when in fact it is not.

-3-

14.

Upon information and belief, Defendant has performed the aforesaid acts with

wrongful purposes and knowledge to inappropriately trade upon In-N-Out’s extensive goodwill
including using In-N-Out’s mark to draw attention to their restaurant.
15.

In-N-Out’s mark is wholly associated with In-N-Out due to its long use thereof,

and as such In-N-Out is deserving of having its mark adequately protected with respect to the
conduct of its business.
Count I
Trademark Infringement Under Federal Law
16.

In-N-Out incorporates by reference the allegations contained in paragraphs 1-16

of this Complaint and incorporates them herein.
17.

By the aforesaid acts, Defendant has infringed upon In-N-Out’s federal trademark

rights described by its trademark registrations, in violation of Section 32 of the Lanham Act, 15
U.S.C. §1114.
18.

Upon information and belief, Defendant’s acts have been willful and in conscious

disregard of the trademark rights of In-N-Out.
19.

In-N-Out has suffered, is suffering, and will continue to suffer irreparable injury

for which In-N-Out has no adequate remedy at law.
20.

In-N-Out is entitled to a preliminary injunction to be made permanent upon entry

of final judgment, preventing Defendant’s further infringement.
Count II
Unfair Competition Under Texas Law
21.

In-N-Out incorporates by reference the allegations contained in paragraphs 1-23

as though fully set forth herein.
22.

Defendant’s acts complained of herein constitute unfair competition under the

laws of the State of Texas.
-4-

23.

Upon information and belief, Defendant’s acts complained of herein were

intentional, wanton, willful, guided by an evil hand and mind, and committed in bad faith and
with the intent to confuse and deceive the public.
24.

Defendant’s acts complained of herein have caused and, unless enjoined, will

continue to cause In-N-Out irreparable harm for which there is no adequate remedy at law.
Demand For Jury Trial
25.

Plaintiff hereby requests trial by jury on all claims asserted triable by a jury.
Prayer

WHEREFORE, In-N-Out prays for judgment including the following:
a.

An Order preliminarily and permanently enjoining Defendant and its officers,

agents, servants, employees, attorneys and all persons in active concert or participating with any
of them from using the boomerang arrow mark or colorable imitations thereof, in any manner
including on signage, in any graphic display or advertising for their restaurants or otherwise
infringing plaintiff’s federally registered marks and/or committing further acts of unfair
competition under Texas law.
b.

A finding that this is an exceptional case; and

c.

An Order that Defendant pay to In-N-Out all reasonable attorneys’ fees and costs

of this action pursuant to 15 U.S.C. § 1117.

-5-

Respectfully submitted,

Dated: November 15, 2011.

/s/ Gregory L. Maag
Gregory L. Maag
Texas State Bar Number 12748500
Southern District of Texas No. 841
[e-mail]
Thomas L. Warden
Texas State Bar No. 24004174
Southern District of Texas No. 22342
[e-mail]
CONLEY ROSE, P.C.
600 Travis, 71st Floor
Houston, Texas 77002
Telephone: [phone]
Facsimile: 713.238.8008
Robert J, Lauson, Esq.
(pro hac vice admission pending)
[e-mail]
LAUSON & TARVER LLP
880 Apollo Street, Suite 301
El Segundo, CA 90245
Phone: [phone]
Fax: [phone]
Attorneys for Plaintiff,
IN-N-OUT BURGERS

-6-