In this case, the story has now in 2024 devolved into “Big business vs. small business”. “David vs. Goliath.” It didn’t have to be this way.
Are you about to open a new business? Do you have a going concern, i.e. a successful business? If so, then why would you ever want to quibble, allow yourself to be vulnerable and risk being intimidated into changing your all too important company name? Typical other possible trademarks like a logo design and slogans come and go. If you have the funds, trademark them too.
The name of your business is critical. OWNING IT and controlling it is worth – almost – your last dollar. If you don’t have the funds, WAIT. Open your new business when you can afford it. At least clear the name before first use. If your business can’t swing it, then your business is telling you something.
APPLY FOR A TRADEMARK.
OWN A TRADEMARK.
Don’t assume you’ll never have an issue. Why take a chance on suffering over your company name? After all, having a trademark gives your company unbelievable intellectual property strength. People, corporations multinationals – in this case holding companies RESPECT trademarks. State and Federal in the USA.
Here’s a story from WSOC TV: https://www.yahoo.com/news/texas-based-whataburger-sues-nc-213546760.html.
Here’s the story on Yahoo’s June 25, 2024 press. See the 1900+ emotional comments, in just 4 hours today.
Whataburger sues North Carolina
mom-and-pop What-A-Burger #13 over name
Maham Javaid, (c) 2024 , The Washington Post
Mon, June 24, 2024 at 4:18 PM PDT·6 min read
https://www.yahoo.com/news/whataburger-sues-north-carolina-mom-231824209.html.
Every business has a name. Therefore, every business have a trademark issue. Is it LEGALLY CLEAR, under trademark law? Can it be trademarked? Trademarking gains ownership rights. Trademark EXPANDS rights in sound, appearance and meaning. Trademarks expand geographic rights. Trademarks establish a higher wall against intruders, while at the same time makes it easier to pursue infringers. People almost universally respect trademarks. It is no wonder businesses who have a trademark are worth more.
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This is who Whataburger is.
Whataburger
Fast food restaurant chain
Whataburger is an American regional fast food restaurant chain, headquartered and based in San Antonio, Texas, that specializes in hamburgers. Founded by Harmon Dobson and Paul Burton, it opened its first restaurant in Corpus Christi, Texas in 1950. Wikipedia
Customer service: 1 (800) 628-7437
Founded: August 8, 1950, Corpus Christi, TX
Founders: Harmon Dobson, Paul Burton
Revenue: 3.34 billion USD (2022)
Headquarters: San Antonio, TX
Number of employees: 43,000 (2021)
Locations: https://locations.whataburger.com/directory.html
No locations in North Carolina. Of the 1022 locations, in 16 States, 729 are in Texas.
A single border State location in South Carolina is opening soon – https://www.foxcarolina.com/2024/03/06/whataburger-breaks-ground-first-greenville-restaurant/. “This is one of the eight new locations in coming 2024-2025.”
Whataburger of Austin, founded in Corpus Christie, has 20 Federal trademarks at the USPTO. Here’s the first, registered Sept 24, 1957. See uspto.gov. Look for Serial #71667794. Click on the “Proceedings Documents” to see all the protective lawsuits.
Whataburger is a very litigious company. See:
https://tsdr.uspto.gov/#caseNumber=71667794&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
https://tsdr.uspto.gov/documentviewer?caseId=sn71667794&docId=ORC20080131135126&linkId=19#docIndex=18&page=1
According to the article, Whataburger was founded in 1950. My estimate, the 1957 Whataburger trademark was first applied for in ~1955. USPTO records are lacking for older trademarks. When I opened TradeMark Express in 1992, it took 19 months to become registered. So, in ~1955 it surely took longer to reach registration. Nonetheless, trademark rights started upon initial trademark application.
So, until ~1955, Whataburger had common law rights around each location, ONLY. Maybe a 10 mile radius, plus expanded by the media purchased to advertise. So, they enjoyed clusters of trademark rights wherever they advertised – NOWHERE ELSE.
Getting the initial Whataburger trademark expanded rights nationwide, coast to coast, in all USA territories – like Alaska and Hawaii back then. They became States in 1959. But, first they were Whataburger States in ~1955. That is a lot of turf to gain ownership of a mere business name. It is nice to have a name waiting for you in the USA, wherever you choose, whenever you choose to open – someday – maybe.
From Whataburger’s perspective, this is about protecting long held trademark rights and telling other infringers, present and future, forcefully DON’T TREAD ON ME. They would be fools not to aggressively enforce their rights. Their brand is stronger BECAUSE they actively enforce their rights.
Whataburger only problem is that they have been historically weak about enforcement against What-A-Burger and What-A-Burger #13. You’ll note they are only going after What-A-Burger #13 for breaching the 2023 agreement, not the other What-A-Burger locations.
There is an issue of acquiescence. Where rights are lost if not enforced. We have seen this argued for 5 years of neglect, other attorneys argue 10 years. The USPTO offers Section 8 trademark Declaration of Continued use, trademark renewal owners, the right after 5 years to pay $200 for a Section 15 filing for incontestability. If a TradeMark Express client is using a name for years, yet finds they are infringing, our network of 12 trademark attorneys will recommend lying low and not trademarking hoping to reach an arguable stage of claiming acquiescence.
Again, company names should be researched BEFORE use. You don’t have to trademark, but your company name should be legally clear, under trademark law.
Whataburger from their actions over the decades seem to be respecting their initial acquiescence from 1956 tom 1970 to What-A-Burger in 1970 when they entered an agreement to respect common law rights in Stanly and Cacarrus Counties, in North Carolina – even though Whataburger’s trademark rights existed in 1955. Whataburger was not a bully, using their wealth to crush the smaller concern in a courtroom.
Whataburger flubbed their “intellectual property football” when they failed to enforce their new trademark from 1955 to 1966. When they hit their first 5 year trademark renewal at the USPTO, they’d have found the North Carolina chain and stomped them then.
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From the North Carolina What-A-Burger #13’s perspective, I’ll copy this paragraph from the Washington Post article. “The first North Carolina What-A-Burger, meanwhile, was founded by E.L. Bost and C.W. Bost in 1956 in Kannapolis, N.C., according to Our State, a North Carolina magazine. At one time, the chain counted 15 locations, each numbered. What-A-Burger #13 was founded in 1969, according to the lawsuit.”
As for What-A-Burger #13, their open date was in 1969. That was a foolish opening since Whataburger had firmly owned national rights from 1955.
In hindsight though in 1956, (as a starting point here), What-A-Burger, the first location, should have done was to hire an attorney or competent trademark service, like TradeMark Express, to do actual comprehensive clearance legal research to make sure the name What-A-Burger was in fact LEGALLY CLEAR or not. I say this, because a restaurant is an expensive proposition, where the name is critical. The name NEEDS to be clear from day one. Even when the first location is at hand, because you have to be SURE the name is LEGALLY CLEAR anyway, as part of the creative naming effort.
IF legally blocked, as What-A-Burger was in 1956, they simply could have picked-another-name. Hyphens intended. In 1956.
McDonalds was founded in 1955 and first filed a trademark in 1961. See: https://en.wikipedia.org/wiki/McDonald%27s#:~:text=On%20May%204%2C%201961%2C%20McDonald’s,%2Darched%20%22M%22%20symbol.
Burger King in 1954 and first filed a trademark in 1959. See: https://en.wikipedia.org/wiki/Burger_King_(Mattoon,_Illinois)#:~:text=In%201959%2C%20after%20prompting%20by,in%20Illinois%20at%20the%20time.
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Fun North Carolina What-A-Burger Trademark Facts.
What could have been.
What-A-Burger could have trademarked either name, Burger King or McDonalds, in 1956. Either name was available to trademark then as a restaurant.
Then later on, either Burger King or McDonalds would have had to pick another name to trademark. The USPTO would have enforced whichever name “old What-A-Burger” trademarked.
This isn’t “Back to the Future”. This demonstrates the value of actual, true, COMPREHENSIVE CLEARANCE LEGAL RESEARCH. All 6 hours and 600-800 pages of it. It affects all businesses. It is critical to the business start-up as well as the trademark filing and protection process over the years.
See how trademarks work?!
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PS: we had a way overdue price increase. We are still $2000-$3000 less than a trademark attorney for LIKE work. We still offer a $1000 Challenge if you can find a better way to get a trademark. Please see: https://tmexpress.com/trademark-express-services/.
TRADEMARK EXPRESS
We spend a year on average to train our research staff how to code and do a legal search. Legal research reports take us ~6-7 hours to run and write up, citing conflicts and similarities for attorney analysis. Many attorneys outsource to us to do their client’s comprehensive research to analyze themselves or commiserate with one of our network of 12 trademark attorneys. Like research by Corsearch and Thomson Compumark are $900 and $1225. Our research reports are cleared in steps: 1) USPTO preliminary, federal & State Trademark and first use Common Law. We have been the only trademark service since 1992 to offer clients step-by-step research, to rollover to a new name/mark and salvage some fees.
When done right, our client’s trademark applications reach registration without surprise.
Since 2008, our TradeMark Express track record is 100%.
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Thank you, Chris DeMassa 650-948-0530
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Email – staff@tmexpress.com
Web Site – tmexpress.com
Blog – https://tmexpress.com/trademark-blog/
Crash Course Trademark Video – https://www.youtube.com/watch?v=3gWaAJR5L18