Welcome to another edition of trademark stories that are inspired by billboard advertisements:

This one was captured for obvious reasons, if you’re familiar with our interest in brandverbing:

Putting aside whether early October is too early to be promoting holiday wine shopping without a hint of a Halloween theme (there’s Stellaween for that), thoughts about the Stellabrate verbing?

Does Stellabrate make you want to throw a party? Hamm it up? Tanqueray? Or, count bottles?

Stella Rosa (Star Rose) has poured itself an overflowing glass of Stella-trademarks (Stellabrate, StellabrationStellaweenStella Peach, Stella Berry, Stella RedStella Pink, Stella Gold, Stella PlatinumStella BiancoStella Babies, Stella Moscato, Stella Rosso, Stella Rose, It’s Stella Time, and Stella Gets Around), but it does not own the six-letter, one-word, star of the trademark show:

If the actual Stella trademark was in Stella Rosa’s constellation of trademark rights, it likely wouldn’t need to be coexisting or peacefully orbiting with the likes of these other wine “star” marks: StellaGrey, Stella Bella, Stella MaePoggio Stella, AquaStella, and Buona Stella.

While Stella Rosa can continue to brandverb with Stellabrate, and grow its constellation of Stella-trademarks, without Stella, becoming a really bright trademark star isn’t likely in this wine galaxy.

Much less in a beer garden:

In April, news broke that two iconic alcohol brands were joining forces to create a remarkable new beer: Jim Beam Budweiser Copper Lager. Fruit of the joint labor is now available for consumption:

The unique combination doesn’t appear destined to fall flat, as in the early days since launch, it seems to be attracting even self-professed “craft beer snobs,” which is probably the point for Bud.

When iconic brands come together in a co-branding arrangement, it’s interesting to note visual manifestations of the joint trademark use guidelines, a peek into who’s steering the Clydesdales.

Not surprisingly, the reigns of the Clydesdales appear most closely held by Budweiser, as the Copper Lager is beer, not whiskey, and BUDWEISER is the largest wording on the packaging.

That said, the Jim Beam brand name and logo does adorn the six pack carton’s front face with top line prominence, suggesting the brand power it brings to the party – liquid version of Intel Inside?

Figuratively though, not literally, as the Copper Lager isn’t a boilermaker beer cocktail, instead the Jim Beam name and logo indicates aging of the lager on genuine Jim Beam bourbon barrel staves.

One of the things the packaging does well, from a trademark perspective, is keeping the visual identities of the brands separate and distinct, as they appear together in this joint branding effort.

It’s really not a good idea, from a trademark perspective, to mix and blend the combined brands into a single new visual identity, as doing so raises questions of ownership and how to untangle.

So, the packaging does a nice job of keeping each sides trademark elements physically separable while communicating why Budweiser invited Jim Beam to team up for this Copper Lager party.

The trademark filings tell stories too. The only filings currently on the USPTO database that contain the terms Copper and Lager in a mark are owned by Budweiser parent, Anheuser-Busch.

So, Anheuser-Busch views the Copper Lager name to be part of the Budweiser Copper Lager and Budweiser Reserve Copper Lager trademarks, but it disclaims exclusive rights in Copper Lager.

What we don’t know (yet) from the disclaimers, is whether Copper Lager is descriptive (capable of being owned as a trademark element), or generic (you know, meaning zero trademark rights).

If Copper Lager is not a category of beer (i.e., generic and incapable of trademark status), and instead descriptive, since this isn’t Anheuser-Busch’s first such rodeo: acquired distinctiveness?

Either way, this joint effort does appear to be Jim Beam’s first rodeo when it comes to beer, as evidenced by the intent-to-use Jim Beam trademark application it filed in April 2018 for beer.

Thankfully these brand owners are sophisticated enough not to combine Jim Beam and Budweiser into a single trademark filing, sadly I’ve seen commingling before, and it isn’t much fun to unwind.

What do you think, is this joint effort a remarkable one? Is it likely to last, stand the test of time?

It has been a while since a billboard campaign has caught my interest and attention, but the currently running Absolut Goes Dark ads are an exception worth noting:

AbsolutJack

AbsolutJohnnie

AbsolutJim

Isn’t it interesting — at least in this context — how the simple references to Jack, Johnnie, and Jim, draw an obvious comparison to the distilled spirits brands Jack Daniels, Johnnie Walker, and Jim Beam? We’ve discussed here before similar fair comparative advertisements — in the context of Vodka brands no less — and brand leader references.

Although the JIM BEAM brand has been federally-registered a very long time, it doesn’t appear the brand has sought protection for the truncated version of its name, JIM.

Same story with JOHNNIE, but not so with Mr. Daniel — he seems to know more than Jack about protecting trademark truncations, having obtained a federal registration for JACK standing alone, more than a decade ago, and he recently used this specimen to keep it active:

JackAd

Swedish Absolut is not only on a first name basis with these well-known distilled spirit brands, but it also appears to know how to own federally-registered rights in the shape of its bottle:

AbsolutBottleNow, if Absolut were to truncate its name, should it target a low calorie version that allows drinkers to target their Abs? Look what one finds when searching for Abs Vodka . . . .

We’ve spilled a lot of digital ink here over the past several years discussing the protection of non-traditional trademarks. We’ve also written about the importance of layering various intellectual property rights (trademark, copyright, and patent) to accomplish the competitive goals of a business. And, we’ve enjoyed writing about non-traditional vodka branding here and here. Today, we have it all come together at once.

A federal lawsuit filed in Minnesota a couple of weeks ago illustrates very nicely the creative layering of intellectual property rights that are available to many brand owners, not just distilled spirit and vodka brand owners.

In Globefill Inc. v. Maud Borup, Inc. (complaint is here and exhibits are here), Globefill (who sells vodka in skull-shaped bottles) brought several IP claims against Maud Borup (who apparently sells cocktail mixers and hot sauces in skull-shaped bottles). I suspect the lawsuit resulted from Maud Borup’s recent Halloween features.

Globefill asserted infringement of its federally-registered skull bottle trade dress rights and its common law rights in the skull bottle trade dress, in addition to infringement of its registered copyright in the 3 dimensional sculpture embodied in the vodka bottle packaging, and infringement of the ornamental design features covered by a design patent (all issued rights shown in the exhibits attached to the complaint).

Specimen for U.S. Trademark Reg. No. 4,043,730
U.S. Trademark Reg. No. 4,043,730

The beauty of the layering of IP rights lies in the fact that each asserted IP right offers a different path to accomplish the same end goals of ending the infringement and unfair competition while also providing a monetary award to the brand owner.

For example, having copyright and patent rights will serve as a strong basis for injunctive relief even if there is no likelihood of confusion (which is required to establish trade dress infringement), so for those IP claims, no need to focus on whether hot sauce and vodka are sufficiently related to establish the requisite confusion for the trade dress claims.

Since the trade dress is federally-registered, the burden shifts to Maud Borup if it wants to defend the trade dress claims on functionality grounds. Without a registration, Globefill would have had the burden of establishing non-functionality of the skull design vodka bottle.

To establish copyright infringement Globefill will need to prove Maud Borup’s access to Globefill’s bottle and substantial similarity of the three dimensional skull works. This uniquely then opens the door to statutory damages and an award of attorneys fees to the prevailing party. On the other hand, with the patent and trademark claims, actual damages must be proven (as opposed to more easily obtained copyright statutory damages), and an award of attorneys fees is only possible for exceptional cases with patent and trademark claims, merely prevailing it not enough (as it is with copyright claims).

And, let’s not forget the boxcar numbers that can result from proving design patent infringement.

Of course, the different proofs and remedies resulting from Globefill’s intelligent layering of IP rights on a single product is far more complex than what I’ve noted here, but I think you get the point — there’s more than one way to obtain injunctive relief and more than one way to obtain monetary relief, based on essentially the same conduct by the defendant.

So, creative layering can be a beautiful sight, but just yesterday, John Welch, over at the TTABlog highlighted a case where the layering of IP rights didn’t go as well for the brand owner.

In that case, the brand owner fell into the all-too-common trap we have warned about for a long time, touting function over form, while trying to obtain non-traditional trademark rights — basically, it was a failed attempt to go beyond the copyright and utility patent rights the brand owner already had secured.

In short, word to the wise, there is far more art than science to an intelligent layering of intellectual property rights.

In the context of the holiday season, what comes to mind when you see a shiny bright red star?

If you’re reading this post from Russia, perhaps the top of a New Year Tree is brought to mind.

Of course, I have brands on my mind, and it has been hard to miss the barrage of holiday advertisements of two different, but well-known, if not famous, brands that feature a red star:

 

MACY’S claims use of the federally-registered solo red star logo for retail department store services since at least as early as 1892.

Macy’s once owned federal registrations for the red star logo in connection with a variety of products, including golf clubs, medicines, tooth powder, and wines.

The Macy’s red star registration for wines was not renewed, however, and expired in 1994, apparently opening the door to federal registration of the above Heineken logo.

So, does that mean Heineken now owns exclusive trademark rights in a single red star in the context of beverages? No, that context is likely too broad, given the rights SanPellegrino has acquired from its use of a red star logo in connection with “mineral and aerated waters and carbonated fruit drinks” since 1900 (or, perhaps 1961).

Heineken actually opposed registration of the SanPellegrino red star logo in 1997, but the opposition was withdrawn two years later — likely an interesting back-story, if anyone knows it, please share.

But, even limiting rights to the context of beer appears too broad for Heineken, as this non-verbal and non-traditional trademark application to the right is as close as Heineken has come to seeking federal registration of the red star logo without being tied to the Heineken brand name. (The colorless version of the same registered logo is almost a decade old now).

It is a curious decision for Heineken to bind rights in the red star for beer to the green/white/black trade dress — given the substantial brand equity in the red star logo for beer — because what it might end up with on another’s beer taps could leave it pounding its own fist (note the red/green/white trade dress on the Anti Hero IPA specimen to the right of the non-verbal trademark registration on the left below):

It is even more curious that Heineken sat on its hands and its heiny, not even attempting to slap Revolution Brewing’s wrist with an extension of time to oppose registration of the red star tattooed fist tapper trademark. Apparently, Iron Fist Brewing thought about it, but then said never-mind.

At this point in time, let’s just say the “red star” beer has been and continues to flow from the tap to the floor, making it almost impossible to put it back into the keg, as evidenced by these multiple third party uses of a “red star” or something close to it, also in the context of beer branding:

 

Not to mention the Redstar bar in Brooklyn, NY, the Red Star Craft House in Exton, PA, the Red Star Bar & Grille in Baltimore, MD, or the closer-to-home Duluth Red Star.

Briefly turning to the context of politics, given how the red star is also a recognized symbol of communism, how is it that Yum Brands appears to be the only one attracting objections on that basis?

I’m thinking we’re back to where we started with context.

Indeed, Yum Brands’ Bahn Shop — Saigon Street Food, appears to cater to those interested in Vietnamese cuisine, and based upon consumer outrage, it recently announced it would drop the red star logo from its visual identity.

Finally, back to Heineken, would you have pounded more than a fist against Revolution Brewing’s six-pointed red star logo on the beer tapper?

Not exactly a scientific survey, but I showed the tapper to one of my sons (who doesn’t yet fit Heineken’s target demographic), and he confidently assumed it was a Heineken beer tap.

Who should be more worried, Heineken, Revolution Brewing, or me?

Combing through the USPTO’s recently approved non-verbal trademark registrations revealed this little gem with Francis Ford Coppola’s name on the label (but not claimed as part of the mark):

Here is the USPTO drawing on the left, showing the claimed mark without any words or colors:

So, besides claiming a broader scope of rights in a non-verbal product container that isn’t limited by any words, I’m thinking that by excluding the label from the claimed mark, and focusing on the shape of the bottle, Mr. Coppola’s project also could avoid a registration conflict with another Gia wine brand that is federally-registered and appears to have priority over the Coppola product by a year and a half — this one on the right is an Italian Pinot Grigio:

Remember my last post discussing the difference between likelihood of confusion as to the question of federal registration at the USPTO and likelihood of confusion as to whether or not use can and should be enjoined for purposes of trademark infringement?

Do you suppose that Mr. Coppola’s team of lawyers know the difference?

Does this example not provide a visual case for illustrating the difference between the right to register and the right to use?

I’m not saying there isn’t infringement here, there might be, you’d have to see how the evidence played out, but you don’t need to see any more than the prior registration for GIA wine to know that there is no room for another GIA mark for wine on the Principal Trademark Register at the USPTO.

But, what if the applied-for mark were FRANCIS FORD COPPOLA GIA for wine, is there room on the shelf for that one at the USPTO?

 

 

 

 

 

 

 

 

 

Diageo, the Tanqueray brand owner is currently running billboard ads in the Twin Cities as part of its “Tonight We Tanqueray” ad campaign. A couple of years back when the campaign first was announced, Diageo explained it this way:

“One of the world’s most awarded gins, Tanqueray London Dry has just launched a substantial new global campaign ‘Tonight we Tanqueray’, positioning Tanqueray as the drink to set the tone to an evening, inviting consumers to start the night right.”

Did you notice the verbing of the Tanqueray brand and trademark? Nancy Friedman over at Fritinancy did last year. As risky as verbing can be for some brands, as we previously have discussed extensively here, here, here, here, and here, Diageo appears to have gotten this one right, making a number of choices consistent with our earlier checklist for mitigating the risk of genericide and avoiding a complete loss of trademark rights.

Diageo obtained federal registrations for TONIGHT WE TANQUERAY and the stylized version depicted in the ads shown above, two years ago. And, it appears another Tanqueray verbing tagline was federally-registered six years ago for READY TO TANQUERAY? — but unless a Section 8 & 15 Declaration is filed during the currently open grace period, it will die a natural death.

One of the non-legal consequences of using TANQUERAY as a verb in these taglines is that consumers naturally will fill in the blank on what the brand means to them so that they can ascribe meaning to the tagline. I suppose this invitation for engagement could be good or bad, depending on how the brand is perceived. Given the title of this blog post, I have filled in the blank for TANQUERAY to be synonymous with TOAST or CELEBRATE. What does the brand mean to you?

The ads shown above also depict something else we have written extensively about here: non-traditional trademarks. Note the classy and unspoken “look-for advertising” to promote the Tanqueray green/red color trade dress and bottle configuration (both federally-registered decades ago).

Last, for the history buffs out there, note the wonderful archive of product labels that can be obtained from the online records at the USPTO, here the front and back of a nearly century old product label for TANQUERAY gin, showing the USPTO’s mail room stamp from 1917:

Until seeing this specimen I hadn’t appreciated Tanqueray is the surname of the brand’s founder Charles Tanqueray.

It must be a very rare surname as the Diageo marks are the only ones in the entire USPTO database containing the term TANQUERAY. And, none of the registrations rely on Section 2(f) of Lanham Act for purposes of distinctiveness.

Have you ever met someone named Tanqueray?

Last week I captured a few eye-popping photographs of a delivery truck parked in downtown Minneapolis promoting Kinky Liqueur, “a delightfully fruity fusion of super premium vodka“:

And my hunch — that scratching the surface of this interesting brandname would reveal a worthwhile trademark story — actually paid off.

As it turns out, Kinky Liqueur didn’t have a straight shot at federal registration with the USPTO since an Australian company already owned two federal registrations for some Kinky marks for rum: KINKYNERO RUM and KINKYLUX RUM. Not surprisingly, the USPTO found likely confusion when Kinky Liqueur sought to register KINKY for distilled spirits and liqueurs, and its weak attempt to argue otherwise was not successful.

This then led a rather determined Kinky Liqueur to file a pair of petitions to cancel the blocking registrations, on fraud grounds, see here and here. The Australian company claimed otherwise, but it ended up settling the dispute with Kinky Liqueur.

The key question to be answered when resolving these kinds of trademark disputes is: Do you want to end up with weak and narrow national rights (consent agreement) or broad and strong geographically-limited rights (concurrent use agreement)? The parties here opted — perhaps reluctantly — to water-down the strength and scope of their respective rights by choosing the former option, presumably because both have their eyes on a national market and don’t want to divide up the country into two non-overlapping geographic territories.

Trademark counsel should strongly encourage their clients to think hard about whether dividing up the country into separate markets is really not a viable option since the consequence of not doing so is significant from a trademark perspective.

In a resolution using a concurrent use agreement, the parties end up dividing the country — and the fact that no geographic overlapping use is permitted provides the basis for convincing the USPTO that there is no likelihood of confusion, and if the USPTO agrees, it can issue trademark registrations to unrelated parties for even identical marks in connection with identical goods, so long as the entire geography of the U.S. is accounted for between them and there is no overlap of geographic territory. This approach is ideal for companies who have a limited geographic market and desire broad and strong rights within that area.

In a resolution using a consent agreement, as the Kinky example illustrates, the parties publicly admit to the absence of any likely confusion, even in the case of overlapping geographic markets, which gives third parties a strong basis for pointing to the agreement (a public record now), to justify their entry into the same market under yet another Kinky brand name.

The Kinky trademark agreement is interesting in that it forbids either party from publishing the Agreement or any of the terms of the Agreement, while at the same time it permits disclosure to the assigned Examining Attorney at the USPTO — that is, by the way, how we obtained a copy from the online trademark file at the USPTO — so, it is a matter of public record, it is not confidential information. No matter how one pours the drink, giving the USPTO a copy of the agreement to overcome a registration refusal amounts to a public airing of the terms of the Kinky agreement.

The Kinky trademark agreement also appears designed to deny the natural consequences of the consent agreement option by including this provision:

“This Agreement is to operate as a resolution of the pending trademark dispute only as between the parties hereto, and it is understood that the parties expressly reserve the right to prosecute suits and claims against any and all other entities or persons that may use like or confusingly similar marks to either of the parties’ trademarks.”

Notwithstanding this provision, the significant hurdle both parties will face in future trademark enforcement efforts will be explaining to the factfinder how their target’s use of a Kinky mark for another distilled spirit product is somehow likely to confuse consumers when these coexisting Kinky marks have been admitted to not result in any likelihood of confusion:

 

  

How likely do you think it is we’ll see yet another’s Kinky spirit to pour over the rocks?

 

–Dan Kelly, Attorney

Twin Cities quasi-celebrity Kieran Folliard grabbed headlines this week by suing the owners of Jameson Irish Whiskey, Pernod Ricard, for trademark infringement.  Folliard is well known in the Twin Cities for founding a chain of pubs, including Cooper, Kieran’s Irish Pub, The Liffey, and The Local.  Of these, The Local serves a locally well-known drink called The Big Ginger®, which consists of whiskey and ginger ale served over ice with wedges of lemon and lime.  The Local has traditionally served The Big Ginger with Jameson, and has done so in such quantities that for five years (FY 2006 – 2011), it poured more Jameson than any other establishment in the world.  (Think about that for a minute.  Not a pub in Ireland, not Boston, not New York, not Chicago, but Minneapolis.)  Evidently we are a thirsty bunch here in Minneapolis.

Well, the friendship may be over.  Folliard has moved on to be the proprietor of his own brand of whiskey, 2 Gingers, and consequently has divested himself of pub ownership.  The Local is now making The Big Ginger with 2 Gingers whiskey and not Jameson.  Jameson allegedly offered to buy THE BIG GINGER trademark in 2009, which Folliard’s companies declined.  Fast forward to last week, when a distributor evidently spotted table tents at another local establishment (local, not Local) promoting a BIG JAMESON GINGER.  Folliard has moved quickly, filing a suit this week and moving for a temporary restraining order.  A hearing date has not yet been set.

Drink trademarks are very interesting types of trademarks because they involve tastes (quite literally) and often incorporate other branded goods.  (We’ve covered this before here.)  Of particular interest in this case is some of the evidence that Folliard’s companies have already submitted, like this presser:

How about that?  According to the proprietors themselves in 2010 (and 2009 and 2008), a Big Ginger consists of Jameson and ginger ale–a claim repeated over and over through the years and many press reports.

The initial allegations in this case do not appear to reflect well on Jameson, but that is always the case with a complaint or opening brief–it is one side of the story.  Look for this one to become really interesting on the merits.

–Sharon Armstrong, Attorney

A recent post on the Freakonomics blog at the New York Times combined two of my favorite things in life – intellectual property and cocktails. “The Creative Cocktail” specifically discusses the creativity to be found in the new cocktail scene – including bars designed like prohibition-era speakeasies, farm-fresh ingredients, artisanal details in every drink, and fancy spins on classic drinks.

The authors of the article – intellectual property professors Kal Raustiala and Chris Sprigman – also discuss the prevalence of copying among bartenders and restaurateurs in the industry and attempts by some in the industry to obtain protection for cocktail recipes. Under U.S. law, cocktail recipes cannot be copyrighted. However, some in the industry are trying to maintain exclusive protection over how certain cocktails are made and presented to the public through other methods, including trade dress and trademark protection. For example, Gosling’s, a Bermudian company that makes Gosling’s Black Seal Rum and claims to be the originator of the Dark ‘n Stormy cocktail, owns U.S. registrations for the mark DARK ‘N STORMY, for “pre-mixed alcoholic cocktail, namely rum and ginger beer” and for “a kit containing Gosling’s BLACK SEAL rum and ginger beer for preparing an alcoholic cocktail.”   However, given the propensity for bartenders seeking to make their marks among a thirsty public by experimenting with ingredients other than the spirit prescribed in Gosling’s registrations, Gosling’s states that defending its trademark registrations to ensure the use of Gosling’s is “a very time-consuming and expensive thing.” Notably, Gosling’s does not own a trademark registration for a cocktail recipe for DARK ‘N STORMY; Gosling’s registrations instead cover the ingredients that Gosling’s stands behind as part of a genuine Dark ‘n Stormy cocktail.

Beyond the expense involved in enforcing claimed rights in a trademark for the make-up of a cocktail, trademark protection does seem to be a tricky means of solidifying a recipe due to the fact that consumers, like bartenders, may do their own doctoring at home and either still associate the name of their new creation with the “branded” drink or modify the name only slightly to note the variation – Light ‘n Drizzly, anyone? I’m not naming the names of my hosts (none of whom tend bar for a living), but I’ve had the pleasure of imbibing more than one cocktail combining a rum other than Gosling’s with a ginger concoction of some sort – be it ginger syrup, ginger bitters, or ginger-something-else – to delicious effect.

For these reasons, seeking intellectual property protection does not appear to be the most artful means of cornering the market for a particular cocktail, not to mention the fact that it seems to be at odds with the inherent creativity of cooking or tending bar – in which chefs learn from one another and customers in part direct the preparation of their food and drink (I want my steak rare! I want a Maker’s Mark manhattan!). So what works? As the authors of the article suggest, building a strong brand is always a good way to establish consumer loyalty. Another option is to do as one other famous rum maker has done – put your name in name of the cocktail.

Cheers!