Waffle House (or any other brand) must and 100% always will send out a C&D for trademark misusage, otherwise they lose legal protection for that trademark.

At least within my corner of the business world (and not just "the internet"), it seems this is common knowledge among lawyers.

My guess is that, sure, would a court throw out a trademark? Maybe not, but the law works on a fine line between actuals (precendent) and hypotheticals, and it's just cheaper to issue a C&D than it is to fight a prologned legal battle about predcedent.

Also, it's interesting you mention Frisbee. There's a term for that: "genericide," and it's the term used to describe that exact scenario. Frisbee is one brand that didn't actively protect against trademark erosion and now we call every flying disc a Frisbee. Retrospectively, Frisbee might have wished they'd sent more C&Ds. Nintendo is one brand that has actively protected brand erosion, which is why we don't call it a Sony Nintendo.

Actually, I'm pretty sure their request has no trademark law legs to stand on. Trademark infringement first and foremost requires two things: a) commercial use and b) for the goods and services the trademark is registered for.

Now I just checked and Waffle House has registered its trademark for "waffles", for "mugs", for "keychains" and other trinkets and for "restaurant services", but has zero registrations for "providing information online" or similar. So they really had nothing to defend with regard to a website that sells nothing.

Basically, had he just changed the website to use the name in text, they would have had a hard time to even forbid the nominative use of the trademark to refer to the actual waffle house (referring to the actual owner of a trademark in a nominative/descriptive manner is generally allowed).

There may be other areas of law that are more pertinent, but this is no case of good faith trademark defense. There was no "must" here. Looks like BSing someone who does not know better so he backs off. Also looks like using the archaic und expensive US legal system as a tool for coercion. Even if you're right, you need to be able to afford being right...

The core use of trademark protection isn't a commercial use, necessarily. Rather, it's the act of infringing on the trademark holder's commercial use. So, if Waffle House is selling Waffle House t-shirts, and a business next door is giving away free Waffle House t-shirts that they printed - then yes, Waffle House would very likely win a lawsuit against someone giving away waffle house t-shirts.

Basically if someone is giving away or, especially, selling something that causes a confusion against the original trademark, then yes, the trademark "must" be protected.

By "must" I don't mean it's legally required. I just mean you're going to have a harder time in court if you need to pursue legal action against a company or person if there's a precedent you have not actively protected the trademark in other instances.

edit: and in this case, the site was causing confusion, so they sent a C&D. Also as the other commentor mentioned, the logo is trademarked.

There is a difference when treating well-known trademarks (say Coca-Cola, Sony, Google), however I doubt Waffle House gets over the threshold set for that for being too local (I counted at least 20 states that do not have one) and not sufficiently known by all demographics (if you want to know more read up on the Lanham Act).

Full disclosure: I am a TM lawyer, but not in the US. YMMV and what I write here is no legal advice ;-) since only gathered from US colleagues' explanations regarding cases clients had in the US.

The notorious/well-know concept is part of an international treaty (Art. 6bis of the Paris Convention) and its interpretation is similar in most western countries, so I'd expect the US interpretation to not be that far off.

Though, I am, again not a lawyer, but I am 99% sure you can't go use the Waffle House logo to sell anything, let alone waffles. I only say that because no one is using, say, the Coca-Cola brand to sell shoes, and if they did, we all know Coca-Cola would prevent that. That goes for any trademark in the US. So perhaps trademark law is different here?

Also, Waffle House are ubiquitous as a brand in the United States - certainly not as well known as Coca-Cola or Sony, but I have no doubt they'd be able to prove national awareness in any demographic.

In this particular case if you look at the C&D, it is for the trademark usage. It's likely that this person could have simply removed the trademark from the page and it would have been fine.

edit: I think the key in other industries would be proof of brand dilution - that is, if you start using the Nike logo to sell waffles, Nike would send a C&D if not a team of lawyers because you are diluting the trademark. So I guess you're technically right, although functionally, brand dilution is easily provable.

Interestingly enough, Waffle House is mentioned in a 2007 article related to a US trademark law reform as an edge case [1].

This does not seem to be the first time that Waffle House appears to be overreaching: [2]. The balls to pull this off with a straight face, kudos to the colleagues.

An article from INTA relating to dilution [3].

[1] https://scholarship.shu.edu/cgi/viewcontent.cgi?article=1864... page 458, last paragraph and footnote [2] https://www.techdirt.com/2011/08/17/waffle-house-says-rap-so... [3] https://www.inta.org/fact-sheets/trademark-dilution-intended...

This logo image consists only of simple geometric shapes or text. It does not meet the threshold of originality needed for copyright protection, and is therefore in the public domain. Although it is free of copyright restrictions, this image may still be subject to other restrictions. See WP:PD § Fonts and typefaces or Template talk:PD-textlogo for more information.

Time to change that braindead law then. Copyright has a "fair use" provision, and trademark law could be adapted similarly.

What you can't do is claim it's yours. Or let people think it's yours.

No, you can't. If you could use it whenever yoh want, we wouldnt have the concept of “nominative fair use” as the exceptional case of when and how you are allowed to use someone else’s mark in commerce without permission.

You can’t represent yourself or product as a brand. But you can write a scathing review about them and use their name and nobody can stop you. That wouldn’t be a trademark situation, it would be defamation, not infringement.

https://en.wikipedia.org/wiki/Nominative_use

Waffle House had a legitimate claim and acted on their obligation to their trademark.

There is a pretty good argument that Waffle House continues to have a claim.

They probably wont do anything because its, frankly, a waste of time.

This could probably have been avoided entirely if copyrights were correctly respected from the beginning.

Vastly different approach with a much better upswing.

You've escalated where threat of escalation should have sufficed. Hey we need you to change your site to make it obvious this is a fan site and not ours. Otherwise we'll have to send a properly lawyery letter in a few weeks if we don't hear back from you about a plan.

One of these throws a person's life into utter chaos. The other gives them time to be a grownup about it.

A lawsuit is the escalation. A cease and desist is a strongly worded letter that isn't really legally binding or anything.

The issue here is just impedance mismatch on the language. The legal department is used to doing things in legal terms, and probably sends out like a lot of cease and desists. And most of the targets of those also have lawyers who are speaking the same language, so it works. Just when it's a random individual getting the letter, there's a lot more confusion.

If this is about PR, as one data point, I don't think any differently of anyone involved. I wouldn't if Waffle House engaged him either.

Our mistake was posting it all over X and LinkedIn. We got hit with a cease and desist so fast.

Marked as wrong timing in the CRM and moved on!

>They should have embraced this guy and his website, engage him, and through that channel let him know "hey, you can't use our trademarks, etc. so you'll need to rebrand, but we love what you're doing and want to help."

I don't mean this cynically or rhetorically, but: why? I get that this is a fun and humorous side project for the creator, but I don't see any real upside for Waffle House in supporting it. If Waffle House wanted to lean into the proxy-for-FEMA marketing angle, it'd be much better off doing it in-house, where it'd have complete creative control. More likely, Waffle House marketing strategists crunched the numbers and are understandably hesitant to expand branding based on national disasters and the woeful state of government response infrastructure.

We do this every year when Nintendo sends an icy C&D to some quirky project built on its IP. Techies rend their garments about the deplorable state of IP law, and forecast imminent fallout from all the "bad PR" and "missed opportunities," as if there's a vast, highly sensitive market segment of temporarily aggrieved nerds that has somehow gone unaccounted for in its sprawling global marketing strategy. "I'll never buy a Nintendo product again!" says the 42-year-old Senior Software Engineer with 312 unplayed games in his Steam library, and the money-printing machine continues to hum unabated.

People make decisions on whether to try going to a place or not on this all the time. Sites use company logos in all kinds of ways, not the least of which is display in image SERPs, whether they fit brand guidelines or not.

The difference is this was a small site without the leverage to ignore WH.

The data should be accurate as possible, and if it isn't, the person should take the site down for that reason. But otherwise, they should have just changed the branding and kept it up.

https://locations.wafflehouse.com/

What this person did was summarize this to a single map with red dots and a "% closed" indicator at the top. And tying it to the connotation that it is due to storms/natural disasters with the "index" moniker. Not something Waffle House really needed.