It’s no secret that Red Bull has a strong trademark enforcement strategy. Too strong, according to some. In its defense, IP counsel for Red Bull has stated that

With a brand as famous as Red Bull you can certainly imagine the type of coat-tailing that goes on by third parties and we invest a lot of time and money to stop such infringements as the brand is that important to the company.

I agree with the sentiment behind the statement. But sometimes the sentiment gets lost in translation. In 2014, Red Bull pursued legal action against a U.K. brewery that began selling beer under the brand Redwell. After a strong public reaction, the company clarified that:

Red Bull has all along been willing to allow Redwell to maintain its mark for beer so long as they do not use it for energy drinks.

Fair point, but I can’t help but wonder, was there ever any indication that Redwell might sell energy drinks? Do consumers expect producers of beer to also produce energy drinks (or vice versa)?

Fast forward and Red Bull finds itself in a similar situation. On Jan. 28, 2015 the company filed a Notice of Opposition to Old Ox Brewery’s application to register its OLD OX BREWERY mark in connection with beer, ale, lager, stout and porter. Red Bull claims that the OLD OX BREWERY mark is likely to create confusion with its RED BULL mark.

As a general rule, the two main factors in the analysis involves (1) the similarity of the overall commercial impression of the marks; and (2) the relatedness of the goods. Setting aside the issue of whether energy drinks are related to beer (which deserves an article all on its own), my initial reaction is that OLD OX BREWERY is simply too dissimilar to create a likelihood of confusion. Whether marks create an overall similar commercial impression depends on similarities between sight, sound, and meaning of the mark.

Other than the number of syllables, OLD OX doesn’t sound or look anything like RED BULL. Accordingly, Red Bull is relying heavily on the “meaning” of the marks. And that’s where things get interesting.

It certainly wouldn’t be the first time where the meaning of the marks trumped differences in sight and sound. Yet when this occurs, the goods are usually identical. For example, CYCLONE and TORNADO found confusingly similar in connection with wire fencing or PLEDGE and PROMISE found confusingly similar in connection with furniture wax.

So what is Red Bull’s argument for similarity in meaning? Paragraph 9 of the Notice of Opposition alleges that:

An “ox” and a “bull” both fall within the same class of “bovine” animals and are virtually indistinguishable to most consumers. In addition, an ox is a castrated bull.

Apparently Red Bull has little faith in the ability of consumers to distinguish between various classes of bovine animals. That would include cows, bulls, oxen, yaks, bison, buffalo, steer, longhorns, and apparently antelopes (Wikipedia threw me a curveball there).

But Red Bull’s claim does not rest solely on the bovine nature of oxen and bulls, but also the fact that an ox is a castrated bull. The implied claim being that the image of a castrated bull creates the same commercial impression as the RED BULL mark. If that’s the case, I’d suggest sending those legal fees to the marketing department to fix that issue. I knew that Red Bull gave you wings, but I guess I never asked what they took in return.

In my mind, the shared similarity in meaning of a bovine animal does not overcome the stark differences in sight and sound between the marks.  In particular an old ox, having suffered through a particular medical procedure, doesn’t scream “energy drink,” but instead, the polar opposite of the commercial impression that Red Bull tries to create. But maybe I’m missing something, kind of like an old ox.

  • James Mahoney

    Sometimes I just sit in bafflement at the trademark goings-on. The Red Bull situations that you discuss, and the SeaHawks’ attempt to trademark the number 12 reported by Jessica Gutierrez Alm are prime examples. (So are singers trademarking common phrases from their lyrics, but that’s a comment for another post.)

    String theory is the only possible explanation for some of this stuff because alternative universes would have to be infinite in order for there to be even one where Old Ox is confused with Red Bull, or no one other than the SeaHawks could put BOOM or the number 12 on a shirt.

    • Tim Sitzmann

      Often it is overreaching by the trademark owner. The one justification I can think of is that Red Bull (or whomever the particular trademark owner may be) is trying to prevent a future issue by setting the boundaries as to acceptable and non-acceptable use.
      Consider the following progression: (1) Old Ox on beer, no issue for me; (2) Old Ox expands to craft root beer, still no issue for me; (3) Old Ox expands to other soft drinks, including energy drinks, not necessarily an issue for me; (4) Old Ox starts selling their Old Ox energy drink in a silver and blue can with an image of an “ox” that looks a lot like a bull. Now I’m listening.
      Unlikely? Probably, but from the Trademark Owner’s perspective, let’s spend $2,000, get an agreement, which shouldn’t be an issue if they really have no intent to sell energy drinks. The alternative is a drawn out dispute after the defendant has invested the time and money into moving forward with a line of energy drinks. Not good for either party.
      You could say Red Bull is doing them a favor by making it clear that they would object to their use in connection with energy drinks. Maybe Red Bull tried to do this and the Old Ox said “No, we may want to sell energy drinks in the future and we’re not going to box ourselves in by signing any kind of agreement.” Did Red Bull offer a compromise re: imagery/packaging? Did Old Ox reject that too?
      Ultimately, the applications only identify “beer,” not anything else. So this seems to me to be an unwarranted preemptive strike. Unless of course there have been some conversations behind the scenes that shed some additional light on the issues.

      • James Mahoney

        I understand the prevent-defense that trademark holders might adopt, but a “mere” $2,000 to a large company forces similar, if not more, expenditure on the small or start-up company, as well as chewing up time and resources that are undoubtedly much more valuable to the smaller company as it’s building its business.

        By Red Bull’s rationale, if it’s what you suspect, they would challenge any bull-related (or even color-related) trademark application regardless of how tenuous the possibility of the company adding energy drinks to their line some time in the future. As Chris from Old Ox indicates, Red Bull’s not interested in peaceful co-existence with a “fourth cousin six times removed on the stepmother’s ex-brother’s-in-law side” beverage trademark.

        And so, I remain baffled by the lunatic fringe of trademark goings-on.

        • Tim Sitzmann

          James, your bafflement isn’t unfounded. I have no doubt that if Red Bull had Old Ox’s budget, they wouldn’t be pursuing this issue.
          Red Bull seems to think its rights extend to use of any bovine animal used in connection with at least soft drinks and alcoholic drinks (I’m not sure what they think about juice or milk, but they’d definitely have an uphill battle with milk….). I haven’t looked into how diluted the RED BULL mark already is, but I imagine that Red Bull isn’t the only company using bulls, oxen, yaks, or cows in connection with soft drinks and hard drinks.

  • Guest

    Hi Tim – This is Chris from Old Ox. Great article! Just wanted to let you know that we did offer to sign an agreement stating that we would never produce energy drinks. Red Bull declined the offer. They wanted us to sign a much stricter agreement prohibiting us from ever using the color red and prohibiting us from producing soft drinks (like root beer) in addition to energy drinks. We tried to negotiate specific shades of red but they were unwilling to compromise in any way shape or form. We refused their agreement and here we are.

  • Chris Burns

    Hi Tim – This is Chris from Old Ox. Great article! Just wanted to let you know that we did offer to sign an agreement stating that we would never produce energy drinks. Red Bull declined the offer. They wanted us to sign a much stricter agreement prohibiting us from ever using the color red and prohibiting us from producing soft drinks (like root beer) in addition to energy drinks. We tried to negotiate specific shades of red but they were unwilling to compromise in any way shape or form. We refused their agreement and here we are.

    • Michael Joseph

      Good luck, Chris. Love your brewery.

    • Tim Sitzmann

      Thanks for the insight, Chris! Sounds like Red Bull was taking a strong stance. Hope you find some of the articles on the blog helpful and best of luck moving forward! Hope to see some Old Ox beer in the Midwest soon!