Examining the Validity of the Trademark Application for IHOB filed by IHOP

By Eric Perrott, Esq.

A marketing strategist’s job is to come up with clever, attention-catching brand strategies and marketing campaigns to generate publicity. Although the International House of Pancake’s (IHOP) recent name-change stunt did just that, the trademark legal strategy behind the name for the Los Angeles-based company raises some questions.

According to media reports, consumers’ interest in IHOP’s main menu item-pancakes- was recently diminishing.  Although most consumers in the United States are aware of the IHOP brand, the Los Angeles-based chain appeared to lack freshness in the minds of consumers. With this decline in popularity, IHOP had to conjure up a large marketing campaign that could get customers to return to its restaurants.

In early June, IHOP posted a teaser advertisement on its Twitter account stating it intended to change its name from “IHOP”, a brand known for over 60 years, to “IHOb.” Before IHOP(b) announced what the “b” stood for, Twitter madness had erupted.  While many Twitter users guessed what the “b” now stood for (anything from barnacles, biscuits, or bacon), confirmation soon came from headquarters in LA that it stood for “burgers,” causing further uproar in the social media realm.

Less than a few months later the “IHOb” marketing stunt has since come to an end and IHOP has returned to using the original IHOP name.  Although a creative publicity campaign that reportedly generated an increase in sales, as well as an increase in its lunch and dinner crowds, IHOP actually went as far as instructing its trademark attorney to file a trademark application for “IHOb.” The new mark (below) features a similar design to the IHOP mark.

IHOb Design Mark	IHOP Design Mark

The fact that IHOP filed an application to register its new “IHOb” design mark is problematic, particularly since it appears that the company has already reverted to using its original IHOP name. There’s also a bigger question – is a marketing stunt even enough to establish trademark rights?

U.S. Trademark law is heavily grounded in the “use in commerce” of a mark. Every trademark applicant signs a sworn statement that the trademark is either in use, or in some cases, the applicant has a real and bona fide intent to use the trademark in the U.S. in connection with the specific goods and services.

IHOP’s trademark attorney signed this statement for his Los Angeles-based client stating that  IHOP was actually using the mark in commerce. However, there is a real question over whether a temporary name change on a restaurant near Los Angeles, California rises to the level of “trademark use.”

Further, even if the U.S. Patent and Trademark Office (USPTO) grants the trademark registration for “IHOb” based on the current use of the mark on a restaurant at the time the company submitted the filing, whether IHOP will be able to maintain the registration is doubtful.

In fact, it may already be subject to challenge. A trademark is abandoned when the owner stops using the trademark and has no intention to resume use. Could IHOP still use “IHOb” on their menu or elsewhere to keep the trademark alive? Sure! But based on what the company has released, it appears that this was only a stunt.

Although IHOP claimed increased sales revenue following the “IHOb” marketing stunt, the filing of a trademark application by the Los Angeles based company was a curious legal strategy.  Presumably the company wanted to keep others from filing trademarks for “IHOb”, however, if the company only had an intent to use the trademark for a quick publicity stunt, the company is unlikely to maintain any meaningful registration of the IHOB trademark.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.