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?

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway:

My questions, permission, co-branding, no permission, but classic or nominative fair use?

Is Google flattered? Free advertising? Do they care? Should they care?

Discuss, to quote John Welch, on another subject.

Carvanaonline car dealer and operator of “a higher state of car buying” — sports a halo in its non-verbal logo shown above, but is it an angel when using the Google name and logo in t.v. ads?

In other words, is the use licensed by Google or could it be defended successfully without permission as trademark nominative fair use? Dear readers, what do you think?

In the meantime, a good friend Steve Feingold (who wears a halo well), will be delivering a Strafford webinar next month on Co-branding — maybe we can ask him to weigh in on this topic?

Word to the wise, not the best idea to name a product or service by using another’s brand.

So, when Duke’s Seafood & Rib Shack restaurant wants to create a name for their bar, permission would be required to use the Corona brand — there is no applicable trademark fair use defense merely because they happen to resell Corona beer, even if a lot of it:

DukesCoronaBarAnd, if you’re wanting to name a crepe menu item that contains both peanut butter and chocolate, it isn’t fair use to call it the Reese’s Cup, or if the crepe contains Oreo you can say so and be protected by nominative fair use, but not if you actually name the crepe Oreo Cookie, and finally, if the crepe contains Nutella, you can say so, but there is no fair use defense when you name it The Nutella, at least without permission and a license from the brand owner:

NutellaContinuing with these Grand Cayman findings, if you’re Burger King, and you strike a licensing and co-branding deal with Kraft, owner of the A.1. sauce brand, you should be able to negotiate an ability to use the A.1. brand name as part of the name for the cheeseburger, but don’t expect to be able to own the name or register it:

A1CheeseburgerMake sense?

HefeWheaties Tableau

Yesterday General Mills announced that it had partnered with Fulton Brewery to create HefeWheaties: a limited edition brew. The beer is a Hefeweizen, which is traditionally a wheat-based beer, making it a perfect canvas for the Wheaties brand.

Normally when these situations arise, it is because one party is complaining (For example, Lucasfilms’ objection to STRIKES BOCK beer). Not this time. Instead, we have two companies that appear to be on the verge of launching a very successful co-branding venture (just check out the press already, here, herehere ).

Aside from the fact that I’m excited to try this beer, the news provides a number of insights into how to co-brand a product. The craft beer industry in particular lends itself to these experiments: craft breweries regularly create limited run products (aka seasonal beers). They also have a loyal fan base that is active on social media (free advertising!). Also, beer can tie in just about any product either through imitation of flavor, or finding a clever name and pairing it with eye-catching packaging. Yet the lessons that can be gleaned from the HefeWheaties announcement aren’t limited to breweries. Instead, the announcement provides insight for any business considering co-branding.

First, there should be a basis for the partnership. Fulton’s founder and a number of its employees are former General Mills employees. The companies have been connected long before this idea arose. As a result, there was a level of trust and collaboration that is difficult to create without a prior relationship. This doesn’t mean that you can only co-brand with current contacts; it just helps. If you don’t have an established relationship, build one! Collaborate on the co-branding idea rather than simply creating it yourself and then handing it off.

Second (or if you’ve failed lesson one above), the product should feel authentic. With HefeWheaties, consumers want to like the product: both companies are based out of Minneapolis; the wheat connection makes sense; and the past history between the employees and management all contribute to a feeling that the product is an idea, not a scheme. Plus, even though I never ate Wheaties as a kid, I feel some nostalgia for it (kudos to you, General Mills marketing team).

Third, make sure you consider the effect of the co-branding on your original market. We haven’t seen this play out yet with HefeWheaties, but there are appreciable (or at least vocal) numbers of people who don’t like seeing brands they purchase associated with alcohol. For example, Ben & Jerry’s announced earlier this year that it would be partnering with New Belgium Brewing to release a Salted Carmel Brownie Brown Ale. I can’t wait to try it when its released this fall. But Bruce Livingston, CEO of Alcohol Justice had a different view, calling it

[a] crass, corporate greedy move to put a brand name like Ben & Jerry’s on a beer. It’s bad for children — who will start looking at beer as the next step after ice cream.

For our purposes, the merits of the characterization of “ice cream” as a gateway drug are unimportant. A company that co-brands should be aware that its brand and company will be associated with the partnering company, its products, and its industry. Give some consideration as to whether there is any potential for the co-branding to impact your public image and, if so, think about how you’ll respond.

Fourth, and finally, get the legal side taken care of in advance. You’ll likely need a trademark license. Decide whether royalties should be involved and, if so, when and how much. Carefully define the time frame for the license and renewal (or termination) options for both parties. These types of arrangements don’t need to be complicated. However, they became much more complicated after you begin selling product.

Yes, I know, Lesson Number One is work with someone you trust and like. However, business can affect that relationship. The parties’ memories may be a bit fuzzy months or years after you agree to start working together. It is much easier to avoid a dispute if the terms are in writing.

Co-branding doesn’t work for everyone, but it seems like it may work for HefeWheaties. The beer is set to be released on August 26, so perhaps we won’t have to wait long to gauge its success. But what’s really on my mind now is which cereal is next? I think a Peanut Butter Crunch stout could be good. Or maybe a Frosted Flakes porter. If anyone out there can make either of those happen, get a hold of me and let’s figure this thing out.

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.

Debbie Laskey, MBA

In today’s crowded marketplace, how do brands stand out? How do they get as much positive brand awareness and exposure as possible without spending more than their marketing budgets allow? In addition to providing excellent customer service and creating amazing customer experiences, one way is to add co-branding to the marketing mix.

According to Wikipedia, “Co-branding, also called brand partnership, is when two companies form an alliance to work together, creating marketing synergy. It is an arrangement that associates a single product or service with more than one brand name, or otherwise associates a product with someone other than the principal producer. The typical co-branding agreement involves two or more companies acting in cooperation to associate any of various logos, color schemes, or brand identifiers to a specific product that is contractually designated for this purpose. The object for this is to combine the strength of two brands, in order to increase the premium consumers are willing to pay, make the product or service more resistant to copying by private label manufacturers, or to combine the different perceived properties associated with these brands with a single product.”

Here are five examples of effective co-branding:

[1] Intel Inside: During the 1990’s, Intel provided processors for computer manufacturers’ machines in return for endorsements by the manufacturers with a sticker that read “Intel Inside”

[2] Nike and Apple: The Nike+ chip is embedded in its running shoes, and Apple promotes the app in its app store

[3] Southwest Airlines and SeaWorld: As the official airline of SeaWord, Southwest features Shamu on three of its planes

[4] Yum Brands: Two of this company’s restaurants are often built side-by-side: Taco Bell and KFC or Pizza Hut and Wingstreet

[5] Chiquita Bananas and Despicable Me 2: As part of the movie, small characters called Minions developed a love for bananas, thus, the resulting partnership – check out this great website.

While both brands in a co-branding arrangement or partnership can benefit from joint publicity campaigns and positive word-of-mouth marketing, there can also be downsides. If one brand experiences a crisis, the negative events or negative publicity can damage the second brand – even if it was not involved directly. This is why it is critical to carefully evaluate the goals and objectives for a co-branding partnership in advance.

So, would co-branding be an effective method to increase customer loyalty for your brand? Chime in and share your co-branding experiences.

For more examples, check out my Co-Branding Board on Pinterest.

By now you know how much I love the Coca-Cola brand and advertising, and this beautiful gem of a billboard is no exception:

What I’m left wondering is whether consumers might view this as a co-branding campaign between Coca-Cola and Ford, and whether Coca-Cola felt the need to obtain permission from Ford to depict the back half of a candy red 1966 Mustang convertible (the detail to the left of the wheel was the give away for me on make and model, in case you’re wondering).

No Ford logos are visible, but there is enough of the vehicle shown for at least certain consumers to recognize it as a Ford Mustang convertible, whether or not they can identify the year.

We had to dig deep into the DuetsBlog archives to find our discussion of a similar billboard ad featuring the front portion of a Chevrolet Corvette in a Schlitz Beer advertisement: Using Another’s Body to Sell Your Products? The Problem of Airbrushing Non-Traditional Trademarks.

Let’s assume no permission was obtained, since no logos from the vehicle are visible, but what are your thoughts about whether Ford can control the use of this much of a classic Ford Mustang to help sell another’s products? And, if Ford has enforceable rights, does this constitute fair use?

You may recall about a year ago I did a post entitled "Delicious Trademarks: Candy Bar Cross-Section Trademarks?" I was reminded of this a couple of weeks ago when I snapped this photo, capturing what I believe to be the same point of sale display that inspired my original post:

A couple of months ago I saw in a convenience store a large Snickers point-of-sale floor-display depicting a prominent and attention-getting cross-section of a Snickers candy bar. Given Mars’ apparent interest in owning and creating non-traditional trademark rights surrounding the Snickers brand (revisit Dan’s post from earlier this year), it made me wonder whether Mars might view (and want consumers to view) the cross-section of the famous Snickers candy bar as a trademark too. After all, trademarks are one form of intellectual property that can last forever, so long as they continue to be used in commerce. In case you’re wondering, I couldn’t find any indication that Mars has sought to register any candy bar cross-sections as trademarks.

Now, keeping in mind, to be a non-traditional trademark, the symbol or device must (a) identify the goods, (b) distinguish the goods from those of others, and (c) indicate the source of the goods, there appears to be (at least) some potential for treating candy bar cross-sections as trademarks, provided the cross-sections actually are used as trademarks in commerce. In other words, it’s not enough that the bars could be sliced to view their otherwise purely internal cross-sections; depictions of the cross-sections would have to appear on packaging or at least point-of-sale materials (advertising alone won’t cut it).

So, to satisfy a court’s hunger for the "use in commerce" requirement, and if depicting the candy bar cross-section on packaging leads to a creative buzz-kill, then a prominent cross-section on point-of-sale displays should suffice. Having said that, given the non-traditional nature of a cross-sectional trademark, perhaps some "look-for" advertising might be just what the candy man ordered to help create the cross-section as a delicious new non-traditional trademark. The Candyblog certainly enjoys showing cross-sections of candy bars in discussing the pros and cons of the various goodies they review. 

In case you’re wondering, I still see no sign that Mars is seeking federal trademark registration of any candy bar cross-section, but just days ago, in a different convenience store, I snapped yet another image of a more recent Snickers point of sale display, this one co-branding with the NFL’s Super Bowl XLV, to be played February 6, 2011, in Cowboys Stadium, located in Arlington, Texas.

Still no trademark application (at least, yet), but this more recent point of sale display actually shows a TM notice positioned next to the cross-section image, indicating Mars does, in fact, view the cross-section as a trademark, see the image below the jump, if you don’t believe me.

Continue Reading Snickers Cross-Section Trademark Notice

  Thumbnail for version as of 15:21, 6 September 2009  Thumbnail for version as of 14:28, 28 October 2007  Thumbnail for version as of 05:55, 3 December 2007

Seth Godin has an amazing knack for creating and spreading ideas that matter, mostly really good ones, by the way. I always look forward to his daily riffs and I have been known to spread some of his important ideas too when they overlap with things I happen to care a lot about.

When it comes to Mr. Godin’s trademark advice, however, I’m not feeling it, sorry (that wasn’t an apology either). Some of it is, well, lacking an indispensable quality. Even when it is accompanied by this witty disclaimer: "I’m not a lawyer. I don’t even play one on TV. If you rely on my legal advice, you’re getting exactly what you paid for."

The problem is, sometimes you end up getting much less than you anticipated and actually end up much worse off, when you follow down even a "free" path based on misunderstandings and misconceptions, at least as they relate to one’s legal rights.

I’ll never forget one evening watching Geraldo Live during the O.J. trial, more than fifteen years ago, as a young trademark lawyer. There was quite a stir about some trademark applications Mr. Simpson had filed for O.J. Simpson, Juice, and O.J., around the time of O.J. Simpson being charged with the murder of Nicole Simpson. I recall one of Simpson’s defense lawyers, the brilliant constitutional lawyer Alan Dershowitz, rebuffing criticism about the trademark filings, unwittingly contending that Simpson never intended to use or benefit from those applications, he simply filed them to make sure no one else could. My jaw dropped when I heard this, because it provided a legal basis to immediately invalidate each one of the applications. In addition, had anyone followed this defensive "legal advice," their trademark filings would have been wasted money and considered invalid and void ab initio, since U.S. trademark law requires that an applicant must have a bona fide intention to use the mark on each and every good and service listed in the application.

Back to Godin on Trademark*, and even more recently, a couple of months ago Seth Godin wrote about how to protect your ideas in the digital age:

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client ‘owns’. News flash: trademark law is designed to make it clear who makes a good or a service. It’s a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol.

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

For the garden variety and non-famous trademark, the scope of rights is defined by whether or not there is a Likelihood of Confusion.

With respect to what trademark law was designed for, and while I don’t consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of "purchasers as to the source of origin of such goods and services." Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

I’m not saying Seth Godin’s opinions about trademarks are Out of Bounds, I’m simply saying some of them are out of date.

With a little luck, and assuming I can get in enough time in front of my Stuart Smalley mirror between now and next week, I’ll explore another misconception or misgiving it appears Mr. Godin has about the registration of trademarks:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn’t actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

So, stay tuned.