Whataburger v. What-A-Burger #13

If you aren't carefully following the exploits of the Kelley Center mascot, Ollie, you may have missed out on a recent post featuring a few Whataburger trademarks. If so, a rather serendipitous event occurred in the IP world recently that compels us to examine their registrations once again. And no, I am not referring to the Whataburger app being a power outage map, although that is pretty innovative use.

Ollie at a Texas Whataburger location, for those of you who missed it

It's about a North Carolina restaurant, What-A-Burger #13, being held accountable for infringement by the now-corporate Whataburger. Instead of rewriting the story and the history of each, here's a link to an article.

Let's go over some extant marks, and speculate on how likely it is to confuse the two, since apparently Whataburger intends to leave its roots and branch out into a mega corporation of fast food in many states. (I have opinions about this and the acquisition of the company by a private equity firm in 2019, but we're also avoiding that today.) 

Documentation of 1975 registration

Initially on Instagram and Facebook, we looked at two marks, one for the iconic striped W plus Whataburger name, and the other for a service mark assigned to the name. But those are just two of many, live and dead. And they are for a variety of goods and services--some for the food itself and others for food service; even charities, playing fields, and more. The name Whataburger alone has quite a few registrations; a brief search reveals 7 registrations for the plain word mark and two for a combo word mark and word appearance. There's a second registration for the W, this one without the whole name, registered in 2016.

2016 registered W

And, since this is a Texas-spawned chain, they also hope to one day own Que Hamburguesa. An application for the word mark was filed in November of 2022, and it is currently under review by an examiner. Learn more here. I only wish they had a specimen!

You'll find these marks, although clearly for the same burger establishment, are owned by two different entities: Whatabrands LLC and Tres Aguilas Enterprises, LLC. Both claim Texas as their location, so without more research (I'm focused on another aspect of this IP; look it up for me if you must know) I assume they are subsidies of the non-Texas private equity firm.

Unfortunately, I cannot find any records of marks, dead or alive, for NC's What-A-Burger #13 in the USPTO's database. That may be due to inadequate searching, or they may not have ever pursued federal registration for a very local brand. And because I do not know enough about the state laws for marks in NC, I can't be certain about state-level registration. I found no claims to any marks on their website, either--not even common law indications. (They have copyrighted it.) It's probably too late now, but I imagine that would have helped them make a case against Whatabuger. 

In my inexpert opinion, it seems highly unlikely the two would be confused. There is no similarity to color scheme or fonts, and the addition of the dashes and the number for only one of the two make it even more distinct. In particular, the fact that both have been around for so many years points to a continued lack of confusion by consumers and earned distinctiveness. An argument could be made that a person unfamiliar with either brand would be confused when first introduced to both, but that is not a scenario likely to play out with any frequency, if ever. The two are made distinct by their history, continued use, and style of products.

Anyway, I don't think this is going to end well for either establishment. Either NC What-A-Burger will be forced to change their name and theme, losing a lot of history and recognition and making TX Whatabuger look like big jerks. Or, TX Whataburger will lose, making them look like ineffective bullies and forcing NC What-A-Burger to pour money they don't have into legal defense.