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?

The City of Portland is known as a hub for craft beer, and its local government couldn’t be prouder. The Travel Portland website proudly proclaims that Portland is “home to more breweries than any other city on earth.” Yet the city’s relationship with the local craft beer scene is not so bubbly at the moment, as trademark dispute between the city and local Old Town Brewing has gone public.

The dispute revolves around Old Town Brewing’s logo and a large lighted sign owned by the city, both shown below.

 

This isn’t the first time the city hasn’t gotten into a dispute with a brewery over the sign. The city previously objected to Pabst’s use of a logo derived from the sign back in 2015.  Our 2015 article contains a good back story as to the city’s purchase of the sign as well as the city’s claimed trademark rights in the sign (and for our regular readers, the investigation into Portland’s unicorn burial ground is ongoing). However, for our purposes, a TLDR history will suffice. The sign is known as the “White Stag” sign and was built in 1940. The text has changed numerous times along with the ownership. The City of Portland purchased the sign in 2010 and has since begun licensing reproductions of the sign to third-parties.

Most recently, Portland sought to license production of the sign to AB InBev, the parent company to Budweiser and a whole host of other big and small names in the alcohol business. Jeff Alworth at the Beervana Blog has a great write up regarding the dispute that is worth a read. As you might expect, the small, local craft brewery is not pleased with Portland’s attempt to permit a direct competitor to use a similar logo. The fact that the competitor is Budweiser certainly can’t help.

Luckily for Old Town, they recognized the benefits of obtaining a registration for their design logo at the U.S. Trademark Office. Even better, the registration is now more than 5 years old and can no longer be challenged on a number of grounds, like confusion with a senior user’s mark.

The City of Portland also recognized the importance of registrations and applied to register the image of the sign for a wide variety of goods and services, including alcoholic products. The Trademark Office has refused registration based on a likelihood of confusion with Old Town’s prior registration.

The situation is a twist on the more common David versus Goliath of Big Beer versus Craft Beer, and not simply because the City of Portland is involved. In fact, the city is claiming that David, aka, Old Town Brewing, is the bad guy. The City is arguing that “it is Old Town Brewing that is trying to prevent the City from using its own logo.”

The city isn’t entirely off base. It’s true that the City isn’t telling Old Town to stop using the logo. But the City’s argument makes a lot of assumptions that may not hold water (or other beverages, for that matter).

The city seems to assume that because the City bought the sign, they own the right to use the component images of that sign for any and all purposes. That’s wrong. For a lot of reasons. Owning a sign doesn’t create trademark rights, use does. And if Old Town began using a portion of that sign as a trademark before any other third-party, then Old Town is the senior user. Also, even if the City owns some trademark rights, the law is clear that a trademark does not provide a right in gross. Trademark rights are defined by the goods or services sold under the mark, with protection against goods and services that are sufficiently related to owner’s goods or services.

Also, the City’s white hat isn’t so white. I’m not even sure it’s a hat. Old Town isn’t the bad guy here. The brewery isn’t telling the City not to use the logo derived from the sign design.  I’m not a politician or a mayor, but I can’t think of any reason why a city needs to be able to use its logo to sell beer. If Minneapolis were doing this, I’d kindly ask that they fix the potholes or finish construction on the bridges over 35W first.

At the moment, it seems that public opinion seems to be in Old Town’s favor, at least based on the limited (and biased) sampling of Old Town’s Facebook Page.  From the legal standpoint, it seems that Old Town has an upper hand, but from all public statements it seems that Portland is committed to moving forward with its own applications and a license. But is a deal with Budweiser important enough to risk the bad press and the alienation of the craft beer industry? The City has until March 15 to appeal the Trademark Office’s last Office Action. By then, we’ll at least know whether Portland wants to continue the fight. In the meantime, I’ll be looking to see how far Old Town distributes its products. Their SHANGHAI’D IPA sounds delicious, not to mention, it has an excellent name.

 

On December 11, I will be presenting a CLE on Brewery and Distillery Law, discussing trademark issues affecting breweries and distilleries.  One of the topics that I’ll spend some time on during that presentation – and one that we’ve covered a lot here – is how the Trademark Office considers beer to be sufficiently related to wine and other spirits when evaluating a pending application for a likelihood of confusion with a registered mark.  The same has, in a few cases, been said about these alcohol products being related to restaurant services or bar services.

In today’s episode involving this issue, Heritage Distilling Company in Washington filed a trademark application in 2016 for a standard character mark BSB for “distilled spirits”.  The Trademark Office refused registration of this mark, however, based on a prior registration by Black Shirt Brewing Company for the following mark for “brewpub services; taproom services; taproom services featuring beer brewed on premises.”

Trademark image

Meanwhile, Heritage Distilling Company filed for the logo below and that went through the office with ease.  Not even an Office Action.  It was filed on April 28, 2017 and registered on October 3, 2017.

Trademark image

Heritage Distilling Company appealed the Examining Attorney’s rejection of its standard character mark for BSB claiming, in part that brewpubs and taprooms are not generally known for distilled spirits.  Although finding the marks to be similar, the Board agreed that the claimed services of the registration were not sufficiently related to support a likelihood of confusion.  “To establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and restaurant services.”  In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003).  The Board further noted that “the definitions of taproom and brewpub refer to beer and food, not spirits. ”  Based on the evidence of record, the Board determined that the Examining Attorney had not satisfied the “something more” requirement here and found that the goods and services were not similar or related.  Only because the record failed to show these goods were related, the Board reversed the refusal.

So what if Black Shirt Brewing Company had instead filed for their mark on “bar services”?  It’s possible that the Board may not have reversed the refusal because there would have been a more clear association between a distilled spirits and bar services.

Taking that a step further, what if Black Shirt Brewing Company had filed for the mark on “beer”?  That would have likely made a refusal of BSB in standard characters over BSB on beer more difficult for the Trademark Office to reverse.  The “something more” standard would not apply when comparing goods to goods – beer to distilled spirits – as it does when comparing food products and restaurant services.  The brewery never filed for its house mark for beer, yet a few months after these applications were filed, they filed for some of its beer names for “beer”.   Here’s the specimen from one of those filings in 2014.  Would you have filed for BSB for beer?

https://tsdrsec.uspto.gov/ts/cd/casedoc/sn86372733/SPE20140823081858/1/webcontent?scale=1

In Monday’s decision in the newly minted Matal v. Tam case, the Supreme Court affirmed the Federal Circuit decision that the Trademark Office’s refusal to register THE SLANTS mark on disparagement grounds was unconstitutional.  Many were not surprised by this decision, foreshadowed in part by the transcript of the January oral argument where the justices leaned heavily into the government’s position.  If anything surprised me here, it was that the Court unanimously affirmed the Federal Circuit in an IP case.  The Court held that Section 2(a) of the Lanham Act was unconstitutional as being viewpoint discrimination by the government.

Many of the news articles that I read about the decision on Monday suggested this decision would open the floodgates to disparaging or offensive marks.  But they’re already there, as many of the briefs in this matter pointed out.  Some have even been found disparaging by other government agencies.

Take, for example, the RAGING BITCH mark that I discussed two years ago.  The Trademark Office stamped a brilliantly gold seal of approval on a registration certificate for that mark for beer, yet the Michigan liquor commission refused to allow the label because it was deemed disparaging and offensive to women.  The Sixth Circuit found the Michigan authority’s refusal unconstitutional on First Amendment grounds, perhaps a prelude to the Court’s decision here.

The holding in Tam seemingly applies not only to trademark law, but also at least to patents and alcohol labels.  Section 1504.01(e) of the Manual of Patent Examining Procedure (MPEP) says that “design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171.”   Section 608 of the MPEP also states that an examiner should object to any papers during the course of the examination of a patent that use language “that could be deemed offensive to any race, religion, sex, ethnic group, or nationality.”  The Tax and Trade Bureau that regulates the alcohol industry from a federal level also includes language that is obscene or indecent from appearing on a label.  See 27 CFR 4.39(a)(3)27 CFR 5.42(a)(3) ; and 27 CFR 7.29(a)(3).  While much has been said about the government’s position in Tam not limiting Tam’s ability to use THE SLANTS, at least this TTB labeling provision in fact does prevent an alcohol manufacturer from using the offensive language.  In the wake of Tam, we are likely to see new challenges to these and other regulations that apply viewpoint discrimination by the government in a manner similar to that of Section 2(a).

Many have exclaimed “how will we stop all these offensive marks?”  This problem doesn’t require a government solution.   Just this April 2017, the Brewers Association recently updated their Marketing and Advertising Code to prevent the use of marks and materials that “contain sexually explicit, lewd or demeaning brand names, language, text, graphics, photos, video or other images that reasonable adult consumers would find inappropriate for consumer products offered to the public” and/or “contain derogatory or demeaning text or images.”  Perhaps other industries – and even the NFL – could take a cue from this self-policing strategy.

 

The word “Jägermeister” conjures up memories (or maybe lapses in memory) for many.  I have only had the German liqueur in the beautiful blue-collar town of Milwaukee, WI – home of my college alma mater.  While you would never catch me ordering the liqueur, I was fascinated by the cool and well-lit dispensing machine behind the bar that kept the product at a desirable serving temperature.

dispenser

Milwaukee is also home of the Milwaukee Bucks professional basketball team, which plays at the Bradley Center downtown along with my Marquette basketball team.  Both teams are gearing up to move from the Bradley Center to a new home.  In April 2015, the Milwaukee Bucks did a brand refresh and unveiled an updated logo with a more aggressive looking deer on a partial circular background.

Here’s a look at the progression of the Bucks’ logo since their inception in 1968 (a progression which appears to create its own commentary on our society):

IMG_0005

The owners of Jägermeister have opposed registration of the Bucks’ new logo above on the right in connection with entertainment services based on their well-known Deer Head mark, which they have registered in most classes.   They may have a point – well, a similar 12-point buck to be more precise as the dominant portion of the mark.

Mark Image

While the filing of an opposition proceeding does not mean that the Bucks necessarily have to cease using the mark, the lack of registration may conflict with the Bucks’ agreement with the NBA.  As with most professional sports associations, this agreement likely requires registrations for marks, as well and representations and warranties that the mark will not infringe on any rights of others.  The Bucks likely would have to cease using the mark – and the owners of Jägermeister would likely demand it as well.

Surprisingly, Jägermeister did not oppose the Bucks’ application for the same mark with respect to various apparel goods in class 25, despite Jägermeister having registrations for similar if not identical apparel goods.  That application was allowed although the Bucks’ are still seeking extensions of time to confirm use of the mark on all of the listed apparel goods.

A brand refresh (or a rebrand) often involves updating original elements of a brand identity to give it a contemporary look and tone.  Creative types tasked with this important work should still be cautious about treading on the rights of others, even if the dominant elements of the mark have been used for a long time.  You can rely on the long term use of some of these key elements to some extent, but adjustments even to these elements may create a likelihood of confusion despite years of overlapping use of the old identity without such concerns.  Working together with legal types proactively can help prevent situations like this when rebranding.

It’s highly unlikely that the Bucks would have to cease use of a forward-facing buck all together based on Jägermeister’s contentions.  The Bucks here may be able to make some tweaks to get back into their lane and avoid drawing a foul, such as reducing the points on the antlers from 12 back to the previously used 8 and making some changes to the background while still modernizing the look.  Otherwise, we may be watching this battle on and off the court for awhile.

Do you think the Bucks have an issue here?

The never-ending battle at the Trademark Office over trademarks for beer and wine suffered another casualty last week, this time over the mark DUO.  Applicant Uinta Brewing Company filed a use-based application to register DUO for beer.  Fun fact:  the Utah-based brewery owns a trademark registration for TINDER for “beer.”

Uinta Brewing uses the DUO mark on product packaging for its 12-pk sampler containing two types of its beers shown below.

duo1

uinta_organic_duo2

Uinta received an office action refusing registration, not for being merely descriptive, but rather based on a likelihood of confusion with U.S. Registration No. 2,255,914 for DUO for wine owned by Chilean wine company Alto de Casablanca, S.A.   Incidentally the mark was assigned to Alto de Casablanca from California-based winery, Franciscan Vineyards.  The Trademark Office asserted that the marks were identical and that “beer” and “wine” were sufficiently related such that consumer confusion was likely.

duowineUinta argued that “beer” and “wine” were not related, basing those arguments on the fact that such a small percentage of trademark registrations cover both beer and wine (about 70 registrations in total), the relative number of registrations for beer and wine (about 8,000 for beer and 18,000 for wine), and also about 10 pairs of registrations for identical or highly similar marks covering “beer” and “wine.”

However, the math was insufficient to overcome the refusal.  In total, the Office provided 11 websites of combination brewery/winery operations and 17 third-party registrations covering both beer and wine.  Uinta appealed this decision, and the Board affirmed the refusal.   This decision provides an interesting comparison with the Board’s decision in In re Reubens Brews LLC, which was decided after the Notice of Appeal was filed in the DUO matter.  As we have discussed here before, Applicant’s REUBENS BREWS & Design mark for beer overcame a refusal over a registration for a stylized RUBENS on wine.  Although not precedential, this decision offers important clues to help overcome similar refusals by distinguishing features between the marks and also responding to the Examining Attorney’s evidence by providing, in part, evidence of the number of breweries and wineries in the United States, not the number of registrations.

While the brewery could have argued the evidence in a similar way to Reubens Brews, these arguments may still not have been sufficient to overcome the refusal.  The more difficult issue with DUO is that the marks were identical as filed.

Can breweries and wineries avoid this issue?  Certainly.  One takeaway from this pair of cases is to consider filing for a mark that includes words or design elements that tie it more closely to beer or wine (as BREWS and the design did for the Applicant in Reubens Brews) or otherwise distinguishes it.  Here, although the packaging might need to be changed first before alleging use, filing for UINTA DUO may have at least overcome the Trademark Office’s concern with the wine’s registration, especially given that another’s registration for DIRIGIBLE DUO for wine co-exists with the DUO registration on identical goods.  Alternatively, properly drafted consent agreements between applicants and registrants can also be used to overcome these refusals.

When an application has been refused registration in view of another’s prior filed mark, one way to resolve the issue is through a consent agreement wherein the registrant consents to the registration and the parties set out the reasons why the parties believe that there is no likelihood of consumer confusion between the marks.  A recent precedential TTAB decision, however, found that in particular circumstances, “no means no” when it comes to trademark registration — even when there is consent.  Sometimes a poorly crafted consent agreement leaves no brewer hoppy.

The procedural background here is a mess, but bear with me as I travel back in time because this demonstrates why you should file an intent-to-use trademark application as soon as possible (spoiler alert:  the earliest filer wins this one).

A Massachussetts brewery, Bay State Brewing Company, Inc., filed a trademark application for TIME TRAVELER BLONDE for beer on January 17, 2013.  The filing claimed a first use date at least as early as January 1, 2012 and the specimen filed with the application is shown below (which as a printer’s proof was surprisingly not refused, see TMEP 904.04(a)).  It was hard to find a good photo showing use of the mark with BAY STATE.

baystatetimetraveler

However, another Northeast based brewery, A&S Brewing Collaborative LLC in Vermont, had already filed an intent-to-use application for TIME TRAVELER for beerale, lager.  A&S Brewing provided a specimen showing use of the mark on a shandy and claimed a first use date that was 11 months after Bay State Brewing’s claimed first use date.   A&S Brewing’s TIME TRAVELER published for opposition a few weeks after Bay State Brewing filed its application.  Bay State Brewing Company requested an extension of time to oppose, which was granted until April 12, 2013.

Meanwhile, Bay State Brewing’s application received an office action with a potential refusal to register over A&S Brewing’s prior pending application.  Bay State Brewing’s attorney filed a response on April 12, 2013 (same day as their deadline to oppose) that included a copy of the consent agreement executed earlier that month.  It was filed the same day as Bay State Brewing Company’s deadline to oppose.  Bay State Brewing Company never opposed the application as the parties entered into a consent agreement, executed on April 10, 2013, whereby Bay State Brewing agreed not do so — unnecessarily foregoing its right to oppose or petition to cancel the registration even if the consent agreement was not accepted.   So, A&S Brewing received a certificate of registration.

The consent agreement basically says that the parties do not believe there is a likelihood of confusion because one party uses it on a blonde beer with BLONDE in a limited geographic area, the other uses it on a shandy, the trade dress is different, and they are used with each other’s house marks, which are different.   The same response included a disclaimer of the term BLONDE, which as many of you know is a type of beer.

timetravelershandy

If both of these were on the shelf and someone asked you to pick up some TIME TRAVELER, would you be confused?

The Trademark Office refused to accept the consent agreement and issued another office action.  Bay State Brewing replied with a copy of a significantly more robust “consent agreement” with an effective date of April 10, 2013.  The Trademark Office again refused to accept the consent to registration agreement, and the Board confirmed that the consent agreement did not overcome the likelihood of confusion between the marks as filed.

It seems to me that parties only needed one of the following:  a restriction on the Registrant from selling in the geographic region identified in the consent agreement or an amendment to one of the applications to include the brewery’s house mark.  A concurrent use proceeding could have been instituted that would limit the registrations to geographic regions, and I believe we will start to see more of these types of proceedings being used in the craft brewery industry.

Further, the parties rely on the trade dress and use of the respective brewery’s house brand on the packaging — but neither marks as filed with the Trademark Office include the house brand.  Bay State could have filed for BAY STATE TIME TRAVELER BLONDE or could have forced A&S Brewing to amend their own application to THE TRAVELER BEER CO TIME TRAVELER SHANDY by keeping the option open to oppose, if the U.S. Trademark Office did not accept the consent agreement.

It is important to remember that the refusal to register the mark does not mean that Bay State cannot use the mark going forward.  A&S Brewing could potentially challenge their use of the mark (assuming they didn’t agree not to do so), but Bay State likely has priority in right to use in some areas based on its use date, which is earlier than A&S Brewing’s filing date.

Morals of the story:  the tortoise doesn’t win the race to trademark protection and be careful with how you draft consent agreements.

 

 

The HBO show “Game of Thrones” is a popular show for nerds and non-nerds alike.  And if you also happen to be a beer nerd, Brewery Ommegang has been making  a series of Game of Thrones-inspired beers in a collaboration with HBO.   This is just another example of a trend of breweries, wineries, and distilleries partnering with movies, television shows, and celebrity status for co-branding opportunities.  We saw similar partnerships with wine and Fifty Shades of Gray, and certainly there’s a plethora of celebrity-owned wines, beers, and liquors.  It’s seemingly worked out well for Ommegang since they’re on to their fifth collaboration with HBO and apparently the beers consistently sell out.

 

ommegang beer

In this episode of the brewing series, Ommegang is selling a THREE-EYED RAVEN dark saison ale, named after the mysterious, recurring bird that has often appeared in Bran’s dreams.  HBO filed an intent-to-use based trademark application for the THREE-EYED RAVEN mark for, among other goods, “alcoholic beverages, namely, beer, ale, lager, stout, porter and shandy.”

After being published for opposition, HBO’s application was recently opposed by Franciscan Vineyards, Inc. over its RAVENSWOOD brand based on a likelihood of confusion between its marks and THREE-EYED RAVEN.  They also own a registration for RAVENS based on the separation of the mark on the bottle.  In addition, they argue similarities based on their logo featuring three ravens in a circle (incidentally having three eyes total).

RavenswoodLabel

 

Franciscan Vineyards, Inc. may be hedging its bets on the impact of the BLACKHAWK decision by the TTAB, which maintained a refusal to register BLACKHAWK on wine in view of a BLACK HAWK STOUT on beer citing the similarities of the marks and the relatedness of the goods.  Marks must be considered in their entireties when analyzing the marks for a likelihood of confusion.  In the BLACKHAWK decision, the applied-for mark was wholly incorporated into the registrant’s BLACK HAWK STOUT mark.  Had the owner filed for BLACKHAWK WINERY instead, the result may have been different.

In this case with HBO, the applied-for mark THREE-EYED RAVEN is not so similar to the registered marks as in the BLACKHAWK case.  It is not wholly incorporated into the registrant’s mark and the two arguably create different commercial impressions.  The sticking point, however, is the Trademark Office’s persistent application of its recent conclusory position that wine is related to beer is related to any distilled spirit.

Who do you think is going to win this one?  And, as these liquor battles proliferate within the Trademark Office, should the bar be heightened for companies to establish relatedness of its wine/beer/spirits to the applicant’s product in order to act against them?

And, if you don’t want to opine substantively, who would you like to see collaborate with a brewery, winery, or distillery like HBO has here?  I could easily be persuaded to buy a Transformers line of beer, some Scandal wine, or a Boondock Saints Irish whisky.

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.