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?

On a recent happy hour trip to HopCat, a brewpub chain with an incredible beer list of local and regional craft beers, I expected to find a trademark issue or two among the tap handles.  However, instead, I was distracted by a “catsup” bottle (hah) positioned casually next to a bottle of Heinz mustard.

The familiar green and gold border, the white cap, the white background, the shape of the plastic bottle…it reminded me of this previous DuetsBlog post involving a de-branded ketchup bottle.  Private labeling and contract manufacturing has become an increasingly popular means of overcoming barriers to entry, entering new market segments, or accommodating increased demand,  especially for breweries, wineries, and distilleries.

I doubt I’m alone in quickly jumping to the conclusion the HopCat “catsup” was a private labeled version of this and also wondered why the mustard wasn’t similarly branded (other than the lack of appropriate mustard puns):

But looking at the back of the bottle, I was proven wrong just as quickly:  “Manufactured for Hop Cat by Red Gold, LLC.”   However, Red Gold ketchup bottles appear to be sold generally with a yellow cap and a yellow label.  Hmm.

I suppose the shape of the HopCat bottle is closer to Red Gold’s shape, but everything else suggested to me that Heinz was the source behind the brewpub’s ketchup.

In contract manufacturing or private labeling agreements, it’s important to consider the responsibilities of each entity for packaging decisions.   Is the buyer responsible for providing the artwork for approval by the supplier?  Or is the manufacturer responsible for that with the buyer’s approval?  What are the approval conditions if any?  And depending on that decision, which entity is responsible for any liability associated with intellectual property or regulatory claims?  The representations and warranties in the agreement should also appropriately protect the entities – especially the buyer who is ultimately putting the product out into the market.

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.

Well, it is the end of February and the Super Bowl hangover in Minneapolis might finally be over. But that doesn’t mean there isn’t still time to analyze trademarks related to the Big Game. Much ado was made about the Eagles’ “Philly Special” trick play.  When a catch phrase is born, it is often followed by trademark filings by opportunistic individuals or those teams, businesses, or celebrities associated with the mark in the first place.  Typically these filings are for apparel items and other novelty items like we saw with the Minneapolis Miracle.

PHILLY SPECIAL is a little “special” in this case because, while there were filings by the Philadelphia Eagles and individuals (presumably, Eagles fans) from Texas to New Jersey to Florida for the mark for apparel and novelty items, the historic Yuengling brewery also filed for PHILLY SPECIAL for use in connection with beer.  They even seemed to have a marketing strategy forming behind it and, well, Yuengling’s logo also incorporates an eagle.  A natural fit.  If you aren’t familiar with Yuengling, it’s a brewery based in Pottsville, Pennsylvania and the oldest operating brewery in the U.S.  It also has a bit of a cult following throughout the East Coast – you know, where there are Patriots fans still reeling from a Super Bowl loss, Ravens fans, and most importantly that other NFL team in Pittsburgh and its Steeler Nation of fans.

With such a wide range of loyal drinkers, this trademark filing associating such an iconic brand with a team seems like an errant throw.  Yuengling expressly abandoned the application last week citing a desire to “allow the Eagles to have full, unfettered access to all rights and uses of the term ‘Philly Special.’”  While it’s unclear whether the Eagles asked Yuengling to withdraw the application (although I would be willing to bet that they did), the audible was probably the right call.

Plus, given certain factions of the Eagles fan base, who wants to have a Philly Special hurled at them?  That honor should only be reserved for Nick Foles with an actual football.

 

Stone Brewing Co., an independent craft brewery based in California, has filed a trademark infringement complaint against MillerCoors LLC and Molson Coors Brewing Co. (collectively “MillerCoors”). The complaint is based on the recent rebranding of the MillerCoors “Keystone” beer. The rebranded packaging separates “Keystone” into two words, with the smaller word “KEY” on a separate line, above the larger word “STONE.” See the photograph below of the rebranded can (Stone Brewing’s co-founder Greg Koch is in the background, looking displeased).

See also the external packaging of the 30-packs, which further emphasize the word “STONE” on the cans:

Stone Brewing owns an incontestable federal trademark registration for STONE (typeset) for “beers and ales” (Reg. No. 2168093).  When MillerCoors rebranded last year, it appears it may have known about Stone Brewing’s registered rights in the STONE mark. MillerCoors had already filed an application to register “STONES” for beer back in 2007, but was refused registration by the Trademark Office, based on likelihood of confusion with Stone Brewing’s STONE registration. After that refusal, MillerCoors abandoned its STONES application.

Nevertheless, when MillerCoors announced its rebranded packaging for Keystone last year, it emphasized that the rebranded can “plays up the ‘Stone’ nickname” for the beer, and further noted that with this rebranding effort, “Keystone Light is grabbing 2017 by the ‘Stones.”

Stone Brewing’s complaint is aggressive and persuasive, but it also includes some playful and humorous language, along with frequent criticism of MillerCoors, including digs at the quality of its beer (or lack thereof), and its decline in recent years as one of the “Beers Americans No Longer Drink.”  Below are a few of my favorite lines (note that “Gargoyle” is a nickname/emblematic self-reference to Stone Brewing)

  • “Since 1996, the incontestable STONE® mark has represented a promise to beer lovers that each STONE® beer, brewed under the Gargoyle’s watchful eye, is devoted to craft and quality. Like all Gargoyles, it is slow to anger and seeks a respectful, live-and-let-live relationship with peers and colleagues – even those purveying beers akin to watered-down mineral spirits. But Stone and the Gargoyle cannot abide MillerCoors’s efforts to mislead beer drinkers and sully (or steal) what STONE® stands for.”
  • “The Gargoyle does not countenance such misdirection of consumers; nor does it support those who would disavow their own Colorado mountain heritage to misappropriate another’s ancestry. Stone accordingly brings this action to help usher Keystone back to the Rockies. Should Keystone not willingly return, Stone intends to seek expedited discovery in aid of a preliminary injunction”

Stone Brewing’s co-founder Greg Koch recently posted a video regarding the dispute, and MillerCoors issued the following public response:

  • “This lawsuit is a clever publicity stunt with a multi-camera, tightly-scripted video featuring Stone’s founder Greg Koch. Since Keystone’s debut in 1989, prior to the founding of Stone Brewing in 1996, our consumers have commonly used ‘Stone’ to refer to the Keystone brand, and we will let the facts speak for themselves in the legal process”

What do you think about this dispute? In my view, it’s more than a publicity stunt. The MillerCoors response about how some consumers may refer to “Stone” for Keystone beer is less relevant than the marks actually used in commerce by MillerCoors. Based on the rebranded packaging’s emphasis of “STONE,” and Stone Brewing’s incontestable registration for STONE for beer, this appears to be a relatively strong complaint. MillerCoors may be rolling a stone uphill on this one. But we’ll have to wait to see its answer and any defenses. Stay tuned for updates.

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 Craft Brewers Conference is an impressive affair. Between the number of brewers I’ve met from across the country as well as internationally, and the colossal trade show, the breadth and scope of the industry is probably most visible from this event.  Set in D.C. this year, it’s surrounded by important historical places and legal landmarks. Like George here.

Throughout the show and its associated events, there are opportunities to sample beers  – including some not made in DC or without distribution in this area but available in other markets.  Without getting too far into the complicated web of laws that govern how alcohol gets from the brewer to the consumer, distribution is challenging and a long term strategic process.  For a trademark to achieve registration though, the applicant must have use in commerce and use in interstate commerce.  So I think George Washington wanted to ask a question on many Brewers minds – are these samples a sufficient use in interstate commerce?

When the brewer has used in commerce – sold or shipped product from its brewery to a purchaser – that can establish the “use in commerce” even if the use is only within the state.  It has to be a product that a consumer can buy, not some token use.  Use in interstate commerce is in addition to that use. It has to have a sale or shipment across state lines – or otherwise federally regulated under the Supreme Court’s expansive interpretation of the Commerce clause. To have a sample at an event like this or at a beer fest, a keg is typically transported across state lines, which can support use in interstate commerce.

So yes it seems that these uses would meet that second standard, but it is important to document that transfer and also document how the consumer encountered the product. Many I saw this week barely had a name of the brewer clearly recognizable, let alone the beer name. They also were being served by convention center staff – an often unavoidable decoupling of a consumer’s experience with the brand.

 

Pisco is a light-colored brandy traditionally produced in portions of Peru and Chile.  One brand that offers this product in the United States is PISCO PORTÓN (the latter word meaning “gate” in Spanish).

duetsblog_piscoporton

Pisco Porton has a number of registrations including PORTÓN, PISCO PORTON, and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO.

The owners of PATRON challenged these registrations, first petitioning to cancel PORTÓN in 2014.  The owners surprisingly didn’t attempt to cancel PISCO PORTON and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO at the same time, but waited until August 2016 to petition to cancel these – despite these being registered before PORTÓN.

Duetsblog_patron

In deciding to cancel the mark, the TTAB went through the typical analysis of the “likelihood of confusion” factors:   the goods “distilled spirits” were identical in both registrations; pisco and tequila are offered in similar retail environments to the same or similar mark; the marks were similar in sight & sound; and the PATRON mark has developed some fame.  The decision here to cancel the PORTÓN mark is not surprising, especially to those of us following trends in this industry.

However, the Board’s decision includes a few points that breweries, wineries, and distilleries ought to consider in their brand management.  First, the Board did not find that PATRON’s claims were barred by laches based on PATRON’s about 2+ year delay following registration before filing the cancellation proceeding.  Companies should be mindful of the potential impact of delay on enforcing a registration against a third party under this theory known as laches.  Second, the Board went into a relatively lengthy discussion on the admissibility of an article  that included quotes from Pisco Porton’s General Manager and Master Distiller made during an interview in London.  He was quoted as saying “sometimes people get PORTÓN confused with PATRON Tequila, which can be a good thing for us” and “[the] names might be similar.”  Since these quotes were from an interview in the UK, the Board found them to be not probative because they did not necessarily reflect sentiments about US consumer confusion.  However, this is an important point for breweries, wineries, and distilleries – as well as any marketer of any good – to consider the implications of public statements, comments made to journalists, or social media posts that may negatively affect their rights in a particular mark.

Now we will have to see how this decision impacts the protection for the remaining PISCO PORTON registrations.   Do you think that the decision will also result in the cancellation of the other PISCO PORTON registrations?

 

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?