—Alan Bergstrom, Beyond Philosophy

  

IHOP (International House of Pancakes) recently filed a lawsuit to prevent another group, International House of Prayer, from using its trademarked acronym. According to the trademark infringement filing, IHOP has repeatedly asked the religious group to drop the use of the acronym IHOP, which is a registered trademark for its franchised chain of restaurants and has been in use since 1973. The International House of Prayer has been using the name and acronym for about 10 years. IHOP claims the prayer group’s use of the initials creates confusion for the public, as well as intentionally creating a name and acronym which it knew was famous and well-recognized in order to benefit from its broad awareness and notoriety. The last straw prompting the lawsuit seems to be the prayer group’s recent offering of food at some of its locations.

I don’t know about you, but it seems to me (and I’m not an attorney, just a branding guy) that there are several issues at play here. First, one could argue that the two organizations are in very different sectors and that the public shouldn’t be confused between the two (even though the prayer group now serves its members/guests something to eat while they come to pray). Consider this scenario. Imagine the possible confusion that could ensue if IHOP (prayer group) were to be caught up in some type of “scandal”, such as tax fraud, or discrimination. In our world of media sound bites, someone scanning headlines that read “IHOP charged with tax fraud”, or “IHOP faces discrimination lawsuit”. Many could easily think the IHOP (pancakes) was the brand under investigation and affect patronage.

One may feel that this is the case of big corporate America picking on the innocence of a small non-profit religious group, but, if the law is interpreted to apply to some groups and not others, then Pandora’s Box is opened. One must wonder why the prayer group didn’t choose another equally meaningful name, like Global Place of Prayer (GPOP), or Best Place to Pray (BPTP), or even International Place of Prayer (IPOP)…probably because none of the other possibilities had the existing brand name recognition that IHOP had. To me, that’s trademark infringement, pure and simple. It seems to me that when someone intentionally seeks to benefit from the goodwill and investments made to create market familiarity and brand awareness (brand equity) by creating a similar brand name, the line has been crossed.

Second, I believe the reason we have trademark laws is to protect the investment and reputation that years of hard work and management have been spent to build up the value of a brand name (so that someone else can’t just come along and use it to their benefit without the investment and recognition that the originator put into it). As brand managers and brand owners, we know the cost (both in sweat equity, as well as financial equity) required to build strong brands. It doesn’t seem fair for someone else to “steal” or “borrow” that brand value without permission or purchase (licensing arrangements exist for that reason).

I wonder if IBM would have done the same if the prayer group had named itself International Bible Mission and used the associated acronym…

What do you think? Does IHOP (pancakes) have a case? Who should prevail?

  • Alan, thanks for sharing your perspective on the IHOP case, it will be interesting to see how it all pans out.
    To prove trademark infringement, many factors will be considered, but in the end, for IHOP (pancakes) to prevail on an infringement claim, they’ll have to establish likelihood of confusion. I suspect that IHOP (pancakes) will lean hard on the recent food offering at the prayer events to bring the services closer than they apparently have been in the past, as a way of making a stronger likelihood of confusion showing, and perhaps more importantly, as a way of explaining and justifying ten years of apparently peaceful coexistence.
    In addition, I’m not sure if IHOP (pancakes) brought a dilution claim, but if so, they’d have to prove IHOP is a famous mark, and then show a likelihood of dilution (by blurring the distinctive character of the IHOP mark or by disparaging it), with no need of showing any likelihood of confusion. Any one out there know if a dilution claim is part of IHOP’s case?

  • According to several sources IHOP (pancakes) is bringing two causes of action against the defendant — the first is the claim of dilution under 15 U.S.C. 1125(c). The second is trademark infringement under 15 U.S.C. 1114.
    My opinion, as a marketing guy fascinated by the intersection of branding and trademark law, this would be better dealt with between the two companies rather than in court. Similar to the issue of Best Buy v God Squad and North Face v South Butt, more damage can be done to the plaintiff’s reputation than any gain through litigation.

  • I come at this situation from the marketing/brand management perspective. As a brand manager, I can’t express a valid legal opinion. Dove (a brand name used for a variety of personal care products) has been able to peacefully co-exist with Dove (chocolate bar brand) for many years. If the two Doves can get along, why not the two IHOPs?
    I do agree with the assertion about why IHOP (prayer) couldn’t have picked a name like GPOP. I can see why IHOP (pancakes) could be upset.
    I was taught during my MBA studies to be aware of legal implications of brand decisions.