-Martha Engel, Attorney
Boston Beer Corporation, makers of Samuel Adams beer, received approval for its intent-to-use trademark application for the word mark BOSTON 2024 for “beer,” which generated some news buzz in light of the city’s bid for the 2024 Olympics. While the move was praised as a smart business strategy to grab the name before other brewers, the legal strategy may need a little work to maintain Sam Adams’ priority in the mark.
To file an intent-to-use trademark application in the United States, the applicant must have a bona fide intention to use the mark – and that bona fide intention must remain until the applicant shows use of the mark with respect to the applied-for goods or services. As the chosen host city will not be decided until 2017 and the Olympics would not happen for another 7 years, use of the mark within three years of the Notice of Allowance (likely to be issued this year) may be difficult. A challenge to the application may be raised by a third party if the applicant fails to continue to have that bona fide intention – or did not have it at the start of the application. Proof showing the bona fide intention include marketing plans, promotional activities, research and development activities, seeking government approval, and other evidence to show that the applicant is actively pursuing use of the mark in commerce. Here, Sam Adams should document discussions with the Boston 2024 planning committee, its marketing plans, and that it’s moving along with seeking government approval for labeling of the beer. Nevertheless, after three years from the Notice of Allowance, Sam Adams would have to show use or refile its 2015 application, at which time it would lose the priority of the 2015 application which would be deemed abandoned. Sam Adams may want to consider selling beer under the mark as soon as the host city is announced (or earlier) and continue to sell beer bearing the mark until the Olympics to avoid a challenge on the basis of abandonment.
Now, on the other hand, could the filing kill Boston’s chances to be a host city? Companies often, and rightly, take into consideration other filings and registrations when considering a new mark or brand. The International Olympics Committee (“IOC”) and its local affiliates, which are extremely protective of their trademark rights as we have discussed at least here and here, likely will consider protection for the host city’s name, as they have done in the past with at least Beijing 2008, Vancouver 2010, London 2012, and Sochi 2014. Each of these registrations included beer at the time of the Games in their respective city. Further, a little known statutory provision, 36 U.S.C. 220506, provides a cause for civil action for use of any trademark falsely representing association with the IOC.
Even if Sam Adams ultimately does not acquire a registration, maybe the smartest part of this business strategy is the ability for Boston Beer to position itself at the negotiating table for sponsorship of the Olympics, when otherwise a “craft brewery” like Sam Adams may be left out of the negotiating conversation in favor of the likes of multinational brewing companies like SABMiller (owners of Miller and Coors) and AB InBev (owners of Budweiser). However, until the registration is granted, the intent-to-use trademark application is only assignable if Sam Adams also transfers that portion of the business pertaining to the trademark.
Of course, in an election cycle, they could drop the current connection to the Olympics and sell beer celebrating the Samuel Adams of the future. Or the 250th Anniversary of the meeting of the First Continental Congress. Or the 40th Anniversary of Samuel Adams beer.
What do you think – was this a smart move by Sam Adams to try to capture this mark at this time?