Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

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?

A few weeks ago, a Mexican restaurant in Fort Collins, Colorado, named “Dam Good Tacos,” agreed to change its name based on a settlement in a trademark dispute with another Mexican restaurant, Torchy’s Tacos.

Torchy’s Tacos owns a federal trademark registration for the mark “DAMN GOOD TACOS” (Reg. No. 4835497) for restaurant services. After learning of the Dam Good Tacos restaurant, Torchy’s filed a complaint in federal court, asserting trademark infringement based on the nearly identical use of its mark, for related restaurant services.

The re-branded name of Dam Good Tacos is now DGT, an acronym for its previous name. Some Coloradans are unhappy with the name change, and Torchy’s is facing some significant backlash on social media for initiating this trademark dispute.

For example, one social media user states that she “kinda hates” Torchy’s for suing DGT, and another stated “shame on Tochy’s” regarding its “frivolous lawsuit,” which makes them “look foolish.”

However, the lawsuit is hardly frivolous. The parties’ marks and restaurant services are nearly identical, and Tochy’s appears to have priority, in addition to all the legal presumptions that come with its federal registration. Also, the parties’ businesses are in the same market, with a Tochy’s Tacos location just a couple miles away from DGT. And before suing, Tochy’s offered DGT financial assistance with a name change, but DGT refused.

Nevertheless, the social media backlash is a reminder that, no matter how strong the case for infringement, trademark “bullying” is a prevalent topic, and it’s important to be cognizant of the potential for negative PR in any enforcement efforts, particularly when there is a significant disparity in the size and resources of the parties, and/or when either party is popular or well-known in a particular market.

There have been several recent examples in this context, where large well-known companies initiated enforcement efforts against smaller parties, but have done so in creative, friendly, and humorous ways, which not only avoided criticism, but also benefited all parties involved, with a supportive public reaction and widespread media coverage.

Two of my favorite, recent examples of this, are the Netflix “Stranger Things” demand letter (we blogged about it here), and Bud Light’s Dilly Dilly demand scroll — which was read aloud by a medieval character at the alleged infringer’s brewery (see our blog post here). Rather than face any backlash or claims of bullying, the reactions to these enforcement efforts were positive, with both companies receiving significant praise, such as “funny,” “cool,” and “super classy.”  That’s quite a feat, as those words are quite rarely applicable to legal demand letters.

What do you think about Torchy’s approach here? Do you have any favorite examples of successful enforcement efforts from a public-relations perspective?

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.

 

Debbie Laskey, MBA

In May, Anheuser-Busch made news when it announced that it would change the name of its most famous brand from Budweiser to America. So, from late-May to November, in every liquor store, convenience store, gas station kiosk, discount warehouse, and supermarket, people will be saying something strange: “I’ll take a six-pack of America.”

According to Money Magazine, “All 12-ounce cans and bottles of Budweiser will feature the word “America” on their labels, instead of Budweiser, in the brand’s distinctive cursive font. The temporary label swap, which will be in effect from May 23 through the presidential election in November, is meant to inspire drinkers to celebrate America and Budweiser’s shared values of freedom and authenticity. The new cans and bottles will also feature lyrics from “The Star Spangled Banner” and “America the Beautiful.” A picture of the Statue of Liberty will appear on Budweiser’s 16 and 25 ounce cans as well as its 16-oz. bottles.”

The name and packaging changes should not come as such a surprise. Jorn Socquet, U.S. Marketing Vice President of parent company Anheuser-Busch InBev, explained that the company is simply implementing its summer marketing campaign, which will feature the Olympics, the Fourth of July celebrations, the Copa America soccer tournament that will be played in the United States, and the presidential campaign season. A fact not readily shared, though, is that beer with “America” labels will not be available outside the U.S.

Will there be negative consequences from the name change? Will people think the beer’s taste will change? Remember the New Coke fiasco. Will people think it sounds weird to go into a bar and order a bottle of America? Will the temporary name change create a wave of patriotism to accompany the interest in the presidential campaign season? Certainly, hot dogs, hamburgers, apple pie and bottles featuring “America” labels will create great Instagram posts on July Fourth.

Of course, some Americans may have missed reading about the name change in Adweek, CNN Money, The Atlantic, USA Today, or Fast Company Design. And they may have missed hearing about it on TV or radio news broadcasts. Worse, they may order a Bud and not even notice the new name and other slight differences in the packaging.

Which brings us back to the key question: If your brand changes its name for a limited time, does the new name better capture your brand promise? Does the new name better attract your core audience? Does the new name better reflect a new audience? Above all, what do you want to accomplish with your name change? And from a legal standpoint, is the new name registered as a new trademark? What happens if there is a trademark infringement, since your brand will be reverting back to its original name at some point in the near future? Do you have answers to these questions? They’re only the tip of the name change iceberg.

While this name change generated media buzz, let’s not forget that the presidential campaign season will just become more heated during the hot summer months. Perhaps, the limited time name should have been “Vote in November” rather than “America.” Let’s just hope voters don’t walk into the polls in November carrying bottles of America!

BudweiserAmericaCansLast week the Twittersphere was chirping loudly and negatively in response to reports that Belgian-owned Inbev would be replacing the Budweiser brand name with “America” on beer cans, as shown above. No bow-tie can shape in this campaign, but the logo is to be on the can’s back.

Headlines like these, suggesting a permanent change probably fueled the negative reaction to the news, but a closer read would reveal that the contemplated “re-brand” would be temporary, only lasting through this year’s Presidential election in November:

When brand owners decide to announce a re-brand, name change, or new logo, they realize there will be no shortage of critics, so in most cases there is a strong business reason for the change. Either something is not working or an opportunity is being missed.

I’m thinking both may apply here. Market share is being lost to the surge of craft brew interest, and with all the election year political hype, Inbev’s approach of taking Budweiser’s typical patriotic branding to a new level, is gaining lots of free media attention in a busy news cycle.

Let’s face it, Inbev would never permanently trade in one of the most valuable beer brands for what is probably the most watered-down name (from a trademark perspective) for a beer in the United States, namely America. It’s just not very unique or own-able, as this sample of third party trademark registrations illustrates:

Actually, this isn’t the first time Anheuser-Busch has thought about aligning itself with the AMERICA name. More than ten years ago it tried to federally-register AMERICA’S BEER for beer, but gave up five years later after a persistent geographically-descriptive refusal blocked it.

Keeping in mind that trademarks are “use it or lose it” rights, Inbev no doubt has at least a few trademark types behind the scenes managing this campaign to avoid trademark abandonment problems that would open the door to ownership of the Budweiser name by another.

I’m looking forward to purchasing a case later this month when AMERICA becomes available on store shelves. I’ll particularly enjoy checking out all the content on the can (including possible non-traditional trademarks), and if nothing else, keep it as a collector’s item, and perhaps a prop for some great upcoming trademark storytelling opportunities.

Finally, let’s wait and see whether InBev’s temporary replacement of THE KING OF BEERS with E PLURIBUS UNUM, as part of the America campaign, will draw any fire from a woman in Wisconsin who owns a federal trademark registration for E PLURIBUS CEREVISIA UNUM for beer, or whether that registration is safe to ignore as abandoned, dead-wood on the Principal Register (it’s in the grace period until August).

Marketing types and trademark types, what is your perspective on Inbev’s America campaign and the Twittersphere’s  negative reaction to it?

UPDATE: Check out my discussion of this topic on WCCO Radio’s News and Views With Roshini Rajkumar, here, which aired Sunday May 15 at 12:20 PM CST.

The Super Bowl ads this year were much like the game itself – maybe one remarkable catch, a few fumbles, and heavy on defense.  Some even deserved a penalty flag – like the one for toe fungus and the revolting puppy-monkey-baby (and I’m an avid Diet Mountain Dew drinker).  However, there were some subtle shifts.

Although female viewership of the Big Game is getting close to being 50%, many (if not most) of the ads were directed to male consumption.  Of those, beer and cars generally dominate the Super Bowl ad scene.  My family keeps a pretty detailed scorecard of the ads, and by my count (not including ads for upcoming films or local spots), 23% of the ads were directed towards cars and 8.5% to beer.

Since this was Super Bowl 50, I’ll first hearken back to the 1990s to two of my all-time favorite  Super Bowl commercials.  I might be biased with a special connection to these two ads, but they are worth a quick review.

https://youtu.be/XO4yvI5QBIg

https://www.youtube.com/watch?v=R1Zaz_VqATE

Both of these ads utilized the expensive Super Bowl air time to reach a new audience, and also pinpointed their most powerful purchasing audience – women.

Although I would argue that, overall, the Super Bowl ads of the 90s were more creative than those that we’ve seen through most of this century (is any one else tired of watching animals acting like humans?), some of the ads this year exhibited similar a similar approach to capitalizing on the exposure of the Super Bowl.

With respect to cars, we saw two ads this year smartly use self-deprecating humor and even negative perceptions of their brand to re-position themselves to a new audience.  Although my favorite ad of Super Bowl L was the Audi “Commander” ad with the new R8, car commercials are generally boring.  They typically focus on some nifty feature (like speakers in a truck bed or voice activated start) or a rugged history if you’re Jeep.  However we saw a significant shift in strategy with respect to two brands.  Prius took many of the negative comments about their vehicles and turned them on their heads in a way that, if you weren’t paying too much attention (or were already a member of the smug club), you may have missed it.   Part of me wonders if the “zip” that they tried to emphasize didn’t borderline on a false advertising claim.  The other was Mini with their “Defy Labels” ad featuring Serena Williams, Tony Hawk, and Abby Wambach talking trash (including some pejorative terms) about the vehicle with the closing line “this car doesn’t care what you call it.”  The Super Bowl also had a quite fetching Ryanville ad for Hyundai, but I’ll still take the Audi R8 over one of those.

The beer ads predominately featured strong females – including a Michelob Ultra ad with female rock climbers, Amy Schumer taking a lead role in Bud Light campaign, and Helen Mirren.  This is a clear shift from how women were previously portrayed in beer ads.  As a recent New York Times article on advertising for the beer industry pointed out, the industry recognized that their ads weren’t speaking to women.  The most surprising statistic to me from that article was that 30% of craft beer drinkers are women, but only 25% of beer drinkers overall are women.  Craft beers tend to be heavier and have a higher alcohol content than your Budweiser or Coors Light, so I was surprised that women had a much larger share of the craft beer drinking population than the overall beer drinking population.  As a result, you may begin seeing more ads divert from eye candy in favor of “empowered” female consumers, as the New York Times article put it.

How are you trying to reach a new audience in your own work?

 

 

 

You might be familiar with the popular mid-90s commercials suggested by the title of this post.  However, the intention of this post is about the use of trademarks on beer to refuse trademark protection for wineries and vice versa, which is an increasing problem for the growing craft alcohol industry.

Recently an Austrailian company, Innvopak Systems Pty Ltd, tried to register WINEBUD in the U.S.  Its description for the mark stated “alcoholic beverages except beers; wines and still wines and sparkling wines; beverages containing wine, namely, sparkling fruit wine and still fruit wine; ready to drink alcoholic beverages except beers.”  While the Trademark Office has been increasingly difficult when it comes to wines and other beer or alcoholic beverages when it comes to approving applications for publication, the WINEBUD application was approved by the Trademark Office, but later opposed by Anheuser-Busch based on its BUD marks for beer.

The U.S. Trademark Office decided in favor of Anheuser-Busch here.  The Trademark Trial and Appeal Board determined that there was a likelihood of confusion because, in short, BUD is a famous mark, the marks are similar, wine and beer are sold in the same places, and consumers are unlikely to exercise care in their purchases based on the price point.  Innvopak had argued that the marks were dissimilar, stating that the WINEBUD mark was a play on vinebud or the bud of a vine and was therefore different in commercial impression than BUD.  It also tried to argue that the applied for goods were sufficiently different from beer.

I’ve often suggested that one of the ways that breweries or wineries could overcome refusals at the Trademark Office based on the relatedness of the goods is to provide survey evidence from consumers showing that the consuming public recognizes that beer comes from breweries and wine comes from wineries and would therefore not be confused by a beer bearing a mark similar to a wine’s trademark or vice versa.  Here, Budweiser commissioned such a study and found some interesting figures:

  • 24% of survey respondents believed that wine sold under the WINEBUD mark would be put out by, affiliated or connected with, or approved or sponsored by Anheuser-Busch. (Put another way 76% of respondents did not)
  • 37% were reminded of Budweiser by Applicant’s WINEBUD mark
  • 45% of respondents associated the name WINEBUD with Anheuser-Busch

Are you surprised by these statistics?  How do you think the court should have ruled on BUD for beer v. WINEBUD for wine?

Marketing has always been an exercise in getting consumers to make a connection with a brand.  As our friend Seth Godin once said “Marketing is no longer about the stuff that you make, but the story that you tell.”   With the widespread use of social media like Twitter, Facebook, and Instagram, those stories are getting more and more personal — and so is the packaging now.

There was the #ShareACoke campaign, with Coke cans with first names or words like “Soulmate” for you to share with a friend, family member, colleague, or stranger.   After launching this campaign, Coca-Cola says that they received about a 2% bump in sales.

Then recently Bud Light introduced cans for each of the NFL teams as part of its #MyTeamCan (a social media hashtag that seems like it could go awry any given Sunday).  Would a Bears, Vikings, or Packers colored can inspire you to buy Bud Light over Miller Light or Coors Light?  Are we going to see fantasy football team inspired packaging?

Another example is Snickers re-packaging as part of its #EatASnickers campaign.  Does anyone else wish that they made a “Hangry” one?

Snickers_Hunger_Bar_Print_Final[1]-1

Contrary to the Coke and Bud examples, Snickers appears to scrub any reference to its registered mark SNICKERS and relies solely on its trade dress — the brown background with the white parallelogram with a red border and blue lettering.  Based on a brief search of the U.S. Trademark Office records, no filing has been made to protect this trade dress, importantly without the SNICKERS name.  Someone please call the logo police.

Two years ago, I wrote about a potential  trend towards de-branding packaging, but we certainly didn’t see the “silent” branding take off.  Perhaps this personalized trend and its accompanying social media is its “loud” branding antithesis.

What do you think about this trend toward personalized products, from either a branding perspective or a supply chain management perspective?  Is personalized branding just a hot trend thanks to the popularity of Instagram and Twitter?  Of the three strategies mentioned in here, which do you think works best (for me its the Coke one)?

Now that Super Bowl XLIX is in the rear view mirror, and the New England Patriots have been duly congratulated for winning anything but a Mediocre Bowl, for those of us with no pigskin in the big game this year, it’s time to think about the possible magic of Super Bowl L.

Wait what? Is that really a good idea, given the recognized meaning of the L-word?

After all, Glee and others have done too impressive of a job cementing the “loser” meaning to L, even though another more positive alternative branding cliche exists: Leadership (as we’ve noted before).

The NFL began using Roman numerals to designate each Super Bowl, beginning with the single-letter V in 1971 for the 5th Super Bowl, and continuing through X to designate the 10th Super Bowl in 1976, all the way to XLIX as depicted above.

However, back in June 2014, the NFL finally announced it would lose the Roman numeral graphic design, kind of like the disappearing 13th floor in an elevator, because Super Bowl “L” wouldn’t be aesthetically pleasing by itself, at least to some — probably unlucky too.

So, next year, Super Bowl L won’t exist, instead we’ll be talking about Super Bowl 50, the Golden Bowl, to be played in the Golden State at the home field of the San Francisco 49ers, who mined for gold back in the day.

Then, after a one year hiatus from that pesky singular Roman numeral, the NFL plans to be back in the Roman numeral business with Super Bowl LI in Houston, and more importantly, Super Bowl LII in Minneapolis in 2018. Make sure to come see us!

I’m thinking the NFL probably made the right call in losing the solo L for the 50th Super Bowl, the graphic on the left below just doesn’t work and only invites ridicule — but, do our readers who are graphic designer types agree? Was there no possible way to sell an elegant solo L?

 

 

 

 

 

 

 

 

 

 

 

 

What do you think, will the Roman numerals make a comeback in Houston for Super Bowl 51?

Oh, I almost forgot, what did you think of the Super Bowl ads?

Budweiser tugged at the heartstrings again, this time with Puppy Love.

Seems like there were lots of ads promoting other television programs — since I’m a huge fan of The Voice and Mad Max Beyond the Thunderdome, that combo was hard to beat for me.

Fiat’s use of a little blue pill to introduce the new 500X made me, as a trademark type, wonder what Pfizer thought about it, can you say Viagra?

Does Fiat not appreciate that Pfizer also owns a non-traditional trademark registration for the color blue as applied to a diamond shaped dosage tablet?

Was Fiat’s use of a hexagonal-shaped tablet enough to avoid the scope of non-traditional trademark rights held by Pfizer? Might some have thought it simply was another funny co-branding Super Bowl ad?

So, which Super Bowl ads were your favorites and why?