A couple months ago, I posted about the contentious trademark battle involving Stone Brewing Co., a craft brewery based in California, who filed a trademark infringement complaint against giant beer conglomerate MillerCoors LLC and Molson Coors Brewing Co. (“MillerCoors”). The complaint is based on the recent rebranding of the MillerCoors “Keystone” beer, which separates and places greater emphasis on the word “STONE.”  Stone Brewing alleged that this rebranded packaging infringed its registered trademark “STONE” mark for beer.

A couple days ago, MillerCoors submitted an 84-page filing for its answer and counterclaims. Typically, an answer is relatively short, consisting of concise admissions or denials. But the answer here consists of 50 pages, with numerous paragraphs providing narrative, argumentative retorts aimed at Stone Brewing. Additionally, MillerCoors alleged four counterclaims, seeking declaratory judgment: (1) of MillerCoors’ right to use STONE to advertise Keystone beer; (2) of the unenforceability of the STONE mark against MillerCoors due to laches; (3) of MillerCoors’ non-infringement; and (4) of MillerCoors’ exclusive right to use the STONE mark.

MillerCoors emphasizes that its rebranded packaging does not use or infringe Stone Brewing’s “STONE” mark; rather, the full “KEYSTONE” mark is always used, and Stone Brewing’s complaint relied on “misleading images” that “misrepresent the look of Keystone cans and outer packaging,” to unduly isolate the “STONE” portion of the mark.

Furthermore, MillerCoors alleges that it made prior use of “STONE” as a nickname for its Keystone beer in its advertising since at least 1995, whereas Stone Brewing did not begin selling its STONE-branded beer until 1996.

MillerCoors also contends that Stone Brewing should not be allowed to enforce its STONE mark against MillerCoors after unreasonably waiting eight years to file this lawsuit, following a demand letter sent by Stone Brewing back in 2010, after which Stone Brewing took no further action.

Beyond the relevant legal points, MillerCoors also offers several rhetorical attacks, in an attempt to counteract the big-beer vs. small-brewing narrative of the complaint. MillerCoors contends that Stone Brewing’s “grandiose” allegations are “misleading and ultimately meritless,” and that the lawsuit is merely a “publicity stunt and a platform to market its beer.” MillerCoors suggests that the lawsuit was really about “Stone Brewing’s struggle with its new identity as a global mega-craft beer manufacturer. Gone is the small Stone Brewing of old. Today, Stone Brewing is one of the largest breweries in the United States and its beer is sold on five continents…. What does a company that was built around its opposition to ‘Big Beer’ do when it becomes ‘Big Beer?’ Stone Brewing’s solution appears to be to file this meritless lawsuit against MillerCoors.”

That may sound harsh, but then again, this pushback shouldn’t be a surprise in light of the aggressive criticism throughout Stone Brewing’s complaint, as discussed in my previous post.

For all of MillerCoors’ attacks of Stone Brewing’s “publicity stunt,” the same label could be applied to the answer and counterclaims, which appear to focus on developing a counter-narrative and managing public perception, in light of the extensive rhetoric, some of which isn’t necessary or particularly relevant to the legal claims.

How do you think this one will turn out? With both sides so clearly invested in this lawsuit being about public relations, marketing, and/or a “publicity stunt,” I wouldn’t be surprised if this lawsuit settles without going very far, to avoid the significant risks of negative PR on both sides. Stay tuned for updates.

Besides some team tournament sadness, the only thing sad about our remarkable Creative Brand Protection Event was our camera problem, so these few photos are all we have to share, so sorry:

From left to right above, special thanks to Shaelyn Crutchley (former PepsiCo, now Volo Creative), Aaron Keller (Capsule), and Rosalie O’Brien (University of Minnesota), they were fantastic, and their valuable insights about Super Bowl LII, Ambush Marketing, and Brand Protection Strategies were nothing short of brilliant.

Equally exceptional were our three alumni Trademark and IP attorney panelists, special thanks to Sarah Lockner (Ecolab), Sharon Armstrong (3M), and Susan Perera (United Health) — their energy and passion, as guardians of the “most important assets” of their companies, was wonderful to witness and experience. Amazing leaders, they offered very balanced, matter-of-fact, and pragmatic insights on how they approach their important brand protection work and certain trademark enforcement tools.

Duey certainly wasn’t sad either, he was the star of this 9th birthday cake (thankfully captured on my iPhone before cutting), congrats Duey, and thanks for ALL those who joined us, as we look forward to Creative Brand Protection II, date to be announced soon, likely late June, so stay tuned.

Not all ambush marketing is created equal. Some can cross the line and create a likelihood of confusion as to sponsorship. Some falsely advertises. But, some is totally fair use and lawful.

This current promotional banner by La-Z-Boy is capitalizing on the excitement surrounding the upcoming Super Bowl weekend festivities, but without reasonable risk of heat from the NFL:

The same can be said for this Lunds & Byerlys in-store signage, with the local grocery chain having tiptoed around the issue entirely by using the Big Game code word instead:

Love the fine-print shout out to local darling, Surly’s Cynic Pale Ale, and the additional shout out to Surly’s “Over Rated” — and clever jab at West Coast IPAs — thankfully no risk of offending all the visiting fans from the East Coast for Super Bowl LII.

By the way, since the Home Team, won’t be playing, merely hosting, which team do you favor from the East Coast, the Philadelphia Eagles or the New England Patriots?

We continue to have Super Bowl LII on our minds here in the Twin Cities. It’s hard to avoid thinking about the upcoming “Big Game” with ads like these blanketing our skyway maze:

Turns out, everyone wants to have a little piece of the action in this upcoming event, even without the formality and cost associated with sponsorship, some call it ambush marketing:

Ambush marketing is not necessarily unlawful. It’s tricky, but I’m guessing the above ad may have cleared a legal review. No obvious conflicts with federally-registered rights, it appears.

Having said that, does this little guy change your view on things? Look familiar? It appears to be the same Wilson NFL Pee Wee Touchdown football without the name brands shown:

I’m thinking the JB Hudson ad employed a little airbrush strategy, or at least some strategic and highly precise palm expansion and placement in hiding the Wilson and NFL logos.

Actually, if so, it’s a good move, but will it be enough — especially given this website link — to avoid the aggressive NFL Super Bowl sponsorship police?

Who owns rights in TOUCHDOWN for footballs, if anyone? Anyone?

Neither Wilson nor the NFL appear to own federally-registered rights in TOUCHDOWN for footballs, but do common law rights exist?

If so, who owns them, the NFL or the maker of the NFL’s official game footballs, Wilson?

Moreover, did legal review consider non-verbal marks? What about the stitching design bordering the football laces? Non-traditional trademark? Functional? If not functional, fair use?

So much to think about as we anxiously await the Big Game in our own chilly backyard . . . .

This past week I’ve been pondering a question of great importance: When might a straitjacket double as a life vest? The answer actually arrived last Monday during INTA’s “The Ethics of Trademark Bullying” panel discussion at the 135th Annual Meeting in Dallas, Texas.

In so many words, our good friend and wise guy Ron Coleman, over at Likelihood of Confusion, described the “trademark bullying” panel as, let’s say, rather muzzled. While I agree that one had to strain to hear any insights, perspectives, or opinions, I prefer the more comprehensive straitjacket metaphor (Hannibal Lecter style) over the mere muzzle, because it obstructs well beyond simple vocal chord vibrations and stills the wildest of “dangerous” body language too, even the likes of this little guy’s gyrations. Yet, Ron critiqued the audible portion of the panel discussion and explained the unfortunate situation this way:

“Similarly, want to talk about trademark bullying?  Briefly mention two or three examples (oddly enough, using “the same examples you might find mentioned in this article) and conclude that they’re not really bullying (kind of like in that article, actually!) (and no — don’t cite the article!  Duh!).  Apologize for not discussing any actual examples of trademark bullying because doing so might offend a the-INTA member company, or, aw shucks, one of my clients, wouldn’t you know? (This actually happened – again resolving, definitively, my original dumb question.)  Then come around to the edgy, original conclusion that maybe we shouldn’t write dumb cease and desist letters any more — you know, what with these crazy kids and their Intertubes and all.”

“It’s easy to crack wise, but the reason, Mr. Wiseguy Blogger, those guys are up there on the panel and you are not is that the people on the panel understand what to say and when to say it.  And when not to say it.”

“And, not to get to all Kurt Gödel about this, but you.  Do.  Not.”

A non-attorney friend of mine recently described how he plans to provide valuable insights and information on his forthcoming blog, but he also “will certainly poke the bear.” The “bear” in his non-legal industry, that is, not a cute, cuddly teddy bear. So, if INTA is an industry bear, Ron, consider it poked (more than a few times). Well, I suppose, it’s not my first time either.

Anyway, back to the problems with INTA’s “trademark bullying” panel discussion (after seeing IPKat’s similar perspective, does that make this post the “tipping point” on the subject?).

In short, Caveat Emptor (“let the buyer beware”) was the word of the hour.

There were so many caveats offered by the moderator at the outset, I lost track of them, except this one: To avoid offending any trademark owners or their counsel, the panel would limit themselves to “just the facts,” no opinions or “judgments” about whether any “trademark bullying” lines have been crossed.

Call me crazy, but I’m thinking more than a few trademark types pay four figures to register for the Annual Meeting, expecting more than legal facts (facts without analysis or opinions can more easily be found on most Big-law firm websites and blogs) — instead, hoping for some valuable insights, perspectives, and well, opinions on the subject at hand, but by all means, answer some questions (or, at least ask some questions of the audience).

Perhaps the juxtaposition of these images says it all:

So, if some other form of “time” actually had “permitted” and the panelists actually had been inclined or “permitted” to share their opinions or “judgments” about the examples or topic, what might you have asked them about trademark bullying?

Last, while we’re on the subject of caveats, INTA might be wise not to forget this one: Caveat venditor (“let the seller beware”). If INTA doesn’t remove the straitjackets from their speakers and also find qualified speakers who won’t self-impose them, the number of trademark types filling nearby hotel rooms to attend the UN-TA may begin to outnumber those paying four figures to register for the official INTA event.

And, recognizing the heavy dose of irony contained in the coming link, when will “ambush marketing” begin to target INTA events?

It’s such a slippery slope.

 With the brand new outdoor Target Field located in downtown Minneapolis, the buzz is palpable, and there is certainly more foot and other forms of traffic, especially on the end of town closest to where the Minnesota Twins now play their home games. Given that increased traffic I suppose I shouldn’t be surprised that some businesses will try to capitalize on that increased traffic and compete for the eyeballs of passersby in the vicinity of Twins Territory.

Exhibit A, shown above, is a very large billboard positioned on the roof of First Avenue (known as "Your Downtown Danceteria Since 1970"). It won the attention of my eyeballs.

When this billboard caught my eye, positioned squarely on the path to one of the parking ramps connected by skyway to Target Field, it struck me as, well, not the most "well-articulated ambush marketing campaign," to borrow Susan Perera’s phrase in her recent posts on Ambush Marketing.

It seems to me that it lacks being "well-articulated" because it actually uses the Twins brand name and trademark in the advertisement, by calling out: "Hey Twins Fans! Car Shop With Confidence" positioned above the Cars.com logo and on the background of what appears to simulate a baseball. Can you say, sponsorship?

My assumption, of course, is that if Cars.com actually were paying for the right to be a Twins sponsor, they’d say so, and neither the billboard nor their website give any such indication.

So, what do you think?

Nominative Fair Use of the Twins trademark? Ambush Marketing? Or is this simply another form of questionable brand bait?

–Susan Perera, Attorney

The World Cup has come to a close. Have you fallen into football withdrawal? Well don’t despair, I thought we could enjoy it a bit longer with a discussion of ambush marketing and some of the advertising campaigns that came out of this year’s championship.

Clearly, major sporting events are financed largely by sponsorships, which in turn, give sponsoring companies the opportunity to get some major face-time with fans. Sponsorship grants category exclusivity to one brand, allowing them to hold-off their competitors from associating with that event.

So if you have a major advertising budget, the question becomes do you sponsor, or do you ambush?

Whenever there is a major sporting event like the World Cup ambush ads begin to appear, bringing to mind the current sporting event without actually mentioning the event itself (or showing any protectable marks or images related to that event).   Most consumers are unaware they have been ambushed and the advertiser reaps the benefit of appearing to be a sponsor. Recent trends have moved towards higher protection of these major events; however, there is currently no legal recourse for a well-articulated ambush marketing campaign.

Nike, for example, has often chosen against sponsoring large sporting events, instead blazing the trail on how to execute an effective ambush marketing campaign. Nike has gotten away with its clever ads for years, but as discussed in my earlier post that isn’t the case for everyone who tries this method.

So, is this underhanded? Maybe. Is it creative? I’d have to say, yes.

Do you think the high price tag for sponsorships at the World Cup or Olympics justify greater legal protection? Does your answer depend on who’s sponsoring and who’s ambushing. What if it is two major companies like Coca-Cola (a FIFA Partner) and Pepsi (unaffiliated)?

Now, what about when FIFA Sponsor Budweiser is ambushed by 36 women in orange dresses promoting the Dutch beer Bavaria? Should small-budget companies be held-off from any and all advertising? What are your thoughts?

After the jump, take a look at the advertising campaigns of some of FIFA’s sponsors and come back tomorrow to see their ambushers’ advertisements.

Continue Reading To Sponsor or Ambush?

With less than 6 months to go until the 21st Winter Olympic Games in Vancouver, trade mark enforcement activities are beginning to heat up.

In January, People for the Ethical Treatment of Animals (PETA) launched its global campaign against the Canadian seal hunt with a version of the Vancouver 2010 Inukshuk logo clubbing a seal in a pool of blood above blood-soaked Olympic rings. PETA is also selling t-shirts, mugs, buttons and stickers displaying this logo, thus capitalizing on its use of the Olympic marks.

The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC), has publicly stated that it has no jurisdiction in this matter on the grounds that with PETA based in the United States, it is the US Olympic Committee’s (USOC) responsibility to enforce the International Olympic Committee’s rights in its trade marks.

The USOC duly complained about PETA’s use of the phrase "Vancouver 2010" and the image of the Olympic rings on its products. In response, PETA publicly took the position that its use was protected as fair use, being an obvious parody. "Absent … confusion, and in the context of a critical and parodic use of the images, there is no trade mark infringement." And there the matter appears to have ended, for now.

In June, 2009, PETA pushed the matter further with the launch of its website www.OlympicShame2010.com, which portrays the Vancouver Olympic mascots Miga, Quatchi and Sumi as bloodthirsty seal killers. 

PETA is clearly targeting the Vancouver Olympics in an attempt to put pressure on the Canadian government to end the Canadian seal hunt. Thus far, VANOC has declined to attempt to enforce its rights under Canadian intellectual property law, and the question remains, could it?

Intended to combat ambush marketing, the Olympic and Paralympic Marks Act (the OPMA) prohibits any person from adopting or using in connection with a business, as a trade mark or otherwise, an Olympic or Paralympic mark as set out in the Act. The OPMA provides for certain exceptions, including use for the purposes of criticism or parody. The Olympic rings, Inukshuk composite design, and the phrase "Vancouver 2010" are all Olympic marks for the purposes of the OPMA.

The Canadian Trade-marks Act also provides a mechanism to protect "official marks", which are uniquely Canadian. Entities that are "public authorities" such as VANOC and the Canadian Olympic Committee have the ability to request that public notice be given of their use and adoption. Once published in the Canadian Trade-marks Journal, official marks cannot be adopted by others in connection with a business, as trade marks or otherwise. Official marks, unlike regular trade marks, need not be associated with specific wares and services to be published and subsequently enforced. Once an official mark is published it does not need to be renewed and is virtually unexpungeable. Official marks accordingly possess far greater protection than any other kind of trade mark. The Inukshuk design, Olympic rings design, and Olympic mascot designs are all official marks owned by VANOC. 

 

With this statutory firepower at their disposal, could VANOC stop PETA’s display of the Olympic marks?

PETA’s "parody" defence could possibly be successful against any cause of action based on the OPMA, since the OPMA provides that use of an Olympic mark for the purposes of criticism or parody relating to Olympic Games is not a "use in connection with a business" (although one questions whether their "parody" qualifies as "parody relating to the Olympic or Paralympic Games"). 

Unlike the OPMA, there is no parody defence under the Canadian Trade-marks Act. However, to be successful, VANOC would have to prove that PETA’s activities constitute adoption of the marks "in connection with a business" and that there is a sufficient Canadian nexus to PETA’s activities for Canadian law to even apply. These are significant hurdles, and thus far, it appears that VANOC is reluctant to give PETA the publicity that a lawsuit would generate – no action has been commenced. 

An additional cause of action for VANOC could be copyright infringement based on PETA’s use of the mascot designs. While PETA may view its use as fair use due to parody, there are a number of court cases holding that parody is not a defense to an infringement of intellectual property rights in Canada.

Megan Langley Grainger, Bereskin & Parr LLP