By: Mark R. Malek

Back in September, International House of Pancakes sued the International House of Prayer for trademark infringement and trademark dilution.  We first wrote about this story here.  Of course, we had some fun with the article, but at the same time, provided our analysis of why IHOP (Pancakes) may have had a point.  The LA Times reports that the pancake giant has now dismissed its suit against the religious group noting that the parties have agreed to resolve their dispute out of court.

Since the case was filed, I have observed a lot of chatter (yes I am referring to my fellow tweeps) about how bad the big corporation was for bringing suit against a church.  Dig a little deeper folks.  It is not as though this is a tiny community church of a few families in the middle of nowhere.  This was a very large organization that served the needs of many families.  Further, and according to the article in the LA Times, it is not as though they should have been surprised when the suit was filed.  The pancake giant, like many other trademark holders, sent warnings to the church group.  These warnings are generally in the form of a “cease and desist” notice.

I am one who appreciates a cease and desist notice and take them as an opportunity to remedy a situation prior to litigation.  At the end of the day, if both parties can check the ego at the door, and I mean both parties (even the trademark holder) then there is likely some sort of middle ground that can be reached.  That is not to say that all cases should settle.  In this particular case, the pancake giant really has no choice but to enforce their trademarks.  If they do not, then their trademarks become nearly valueless.  This case wound up in litigation because their notices (or attempts to resolve the matter) apparently went ignored.  What choice did they have?  It is overly-aggressive enforcement of trademarks that drives me nuts – see my series on Facebook here, here and here.

It is unclear what the terms of the settlement are, but I suspect that the settlement will include some sort of terminology that preserves IHOP’s (Pancakes) rights to enforce its trademarks, and some sort of recognition by IHOP (Prayer) of the validity, distinctiveness, etc. of the IHOP (Pancake) trademarks.  The moral of the story is that if you find yourself on any side of a trademark dispute, you really should attempt to engage in meaningful settlement negotiations prior to taking the dispute to the next level, i.e., costly litigation.  Any attorney that tells you otherwise is really just looking out for his/her own interest!