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?

Suspended high above Chelsea Market in New York City are these eye-catching ads for OWYN:

That’s a new brand for me, I’m unsure how to pronounce it (Own, Owen or Oh Win), but OWYN apparently stands for Only What You Need — for dietary supplement protein products that “use nutritious, plant-based ingredients and leave out inflammatory animal products and allergens.”

Meanwhile, another kind of suspension has occured deep within the bowels of the USPTO, where the OWYN federal trademark application is presently suspended, because of a prior-filed pending intent-to-use application for EWYN, covering overlapping goods, including dietary supplements.

Fortunately for OWYN, it had filed an even earlier intent-to-use application for the spelled-out mark OWYN ONLY WHAT YOU NEED, beating the EWYN filing date by six months, giving OWYN the ability/leverage to file a Notice of Opposition against registration of the blocking EWYN application.

Actually though, had the OWYN application been filed when the earlier OWYN ONLY WHAT YOU NEED application was, the suspension and ITU log jam at the USPTO could have been avoided.

As it stands now, the OWYN application is suspended pending the outcome of the prior-filed EWYN application, which in turn is suspended pending the outcome of the opposition against it, which is suspended while the parties attempt to settle the conflict and discuss likelihood of confusion.

In the Opposition, OWYN contends there is likelihood of confusion between EWYN and OWYN ONLY WHAT YOU NEED, which is a bit dangerous to allege. If it loses that argument, it won’t be able to knock out the blocking EWYN application, making it difficult to then convincingly say there is no likelihood of confusion between the more similar OWYN and EWYN marks, for the same goods.

Working backwards, and as a practical matter, unless the parties are able to reach an agreement as to peaceful coexistence, the OWYN application likely will remain suspended unless and until the prior-filed EWYN application is knocked out of the way or otherwise abandoned.

This train of suspensions is a good reminder to file all pertinent intent-to-use applications sooner than later, once a bona fide intention exists to make commercial use of the mark in commerce.

It also illustrates how important intent-to-use application filing dates can be in determining priority, especially when there is a long period of time that elapses before actual use is made.

On a lighter and less technical note, and for any Lord of the Rings fans out there, do any of the marks in this discussion remind you of EOWYN (pronounced A-O-WIN)?

How, if at all, might you rely on the existence of EOWYN to argue either side of the likelihood of confusion argument between EWYN and OWYN?

Well, it was fun while it lasted. Some incredible moments last longer than others, and when the stars are all lined up, they can even translate into a movement. Yet, the blistering loss in Philly proved that our hope of being more than a host for Super Bowl LII, wasn’t meant to be.

Minnesota was seriously buzzing for the past week, following the incredible final-second touchdown score by Stefon Diggs, to launch the Vikings past the Saints, sending them to Philly to be favored as the likely NFC champion for Super Bowl LII. No more Dilly Dilly, Vikes couldn’t Bring it Home.

Sadly for the Minnesota Vikings and their fans across the country, the meaning of the Minnesota Miracle and Minneapolis Miracle phrases have been relegated to a brief moment in history — memorable no doubt, but memorable and meaningful for much less than most hoped for here.

Trademark filings reveal that the Minnesota Vikings hoped for more too, and likely hoped to cash in more too, within twenty-four hours of the infamous catch, the team sought to turn the meaning of Minnesota Miracle and Minneapolis Miracle into exclusive and proprietary trademark rights.

Team ownership filed a few used-based applications (here and here) and a pair of intent-to-use trademark and service mark applications (here and here) covering virtually every good/service known to men, women, and children, including the proverbial kitchen sink. Are you wondering how many of those items could withstand a challenge on the requisite bona fide intent? Let’s say I am.

It remains to be seen whether the USPTO will issue the increasingly common failure to function and informational refusals against the use-based applications.

It also remains to be seen whether the buzz around the Vikings several trademark applications concerning those phrases will last longer than our week of euphoria.

Perhaps even most interestingly, no one seems to be reporting about the apparent lack of alignment on who owns what surrounding the Minnesota Miracle and Minneapolis Miracle phrases, with quarterback Casey Keenum (a little slow on the draw) filing for both phrases as trademarks (two days after the Vikings did), and with Stefon Diggs apparently selling his own shirts, here:

A common misunderstanding about trademark law involves what is actually necessary in order to “own” a trademark. There are a number of requirements that many companies miss if the company doesn’t do its research or hire an attorney. In fact, a company can file an application to register a mark and obtain a registration, but then when a dispute arises, find out that its application will be cancelled for failure to comply with the necessary rules. The Trademark Trial and Appeal Board (“TTAB”) recently provided us all with a cautionary example of what can happen with respect to failing to follow the rules for certain types of applications.

In the United States, merely “filing” to register a trademark is insufficient, even if nobody else has rights in that mark. In order for a mark to be valid, the owner must have used the mark in commerce and, in order to obtain a federal registration, the mark must be used in interstate commerce. Nearly thirty years ago, the rules for obtaining a registration were modified slightly to allow applications to register marks based upon the intent to use a trademark in the future, instead of the previous rule requiring actual use in interstate commerce. This is commonly referred to as an Intent-to-Use (“ITU”) application.

In some ways, an ITU application allows a company to “reserve” rights in a trademark before it begins using the mark. A primary benefit of the ITU application is that it allows the Trademark Office to review the application before the applicant has invested significant money in packaging, marketing, and other items. If the Trademark Office rejects the application, the applicant may save money by avoiding the cost of rebranding the product or redeveloping marketing materials.

However, applicants without the advice of an attorney often don’t realize that, to be valid, an ITU application requires the applicant to have a “bona fide intention . . . to use a trademark in commerce” at the time the application was filed. 15 USC 1051(b). An applicant cannot just file an application because it has an idea for a trademark, or because the applicant thinks it would be a good name.

The applicant in The Trustees of the Bonnie Cashin Foundation v. Lake recently discovered this requirement the hard way. There the applicant applied to register the mark BONNIE CASHIN in connection with various handbags and clothing items. Bonnie Cashin (shown below) was a well known fashion designer.

Bonnie Cashin

Unfortunately for the applicant, the TTAB granted a Motion for Summary Judgment finding that the applicant lacked a bona fide intention to use the mark on the filing date of the application and denied registration of the application (decision available here).

So how do you prove that you have a bona fide intent to use a mark? Documentary evidence goes a long way, such as marketing plans, product development, contacting manufacturers or retailers, etc. can all help establish a bona fide intent to use. On the other hand, if there is no documentary evidence , then this can be sufficient to establish that the applicant lacked a bona fide intent to use, unless the applicant can identify other facts that demonstrate this bona fide intent.

However, the only steps the applicant had taken to use the mark in commerce consisted of (1) filing the trademark application; (2) writing a book about her relationship with Bonnie Cashin; (3) promoted and discussed her relationship with Ms. Cashin in the press; and (4) while an employee of the Bonnie Cashin Foundation, promoted and marketed the Foundation.

The TTAB rejected this evidence as insufficient. None of the evidence demonstrated commercial steps to use the mark in commerce in connection with handbags or clothing items. The book and accompanying also did not occur until 2016, more than 4 years after the filing date of the application. Although the TTAB will consider evidence that occurs after the filing date, here the gap in time was too long for the TTAB to consider it credible, notwithstanding the other deficiencies. The TTAB also determined that the applicant’s work on behalf of the Foundation was irrelevant as the actions were taken on behalf of the Foundation. Accordingly, the TTAB granted the opposition and refused registration of the application.

So if you are considering filing an application, or assisting a client with filing an application, take a moment before submitting to evaluate whether your client has a bona fide intent to use the trademark. Identify the facts that support this bona fide intent and confirm that, if necessary, there would be some documentary evidence to support these facts. Doing a little work up front can help you avoid losing your registration and avoid the time and cost of an opposition or cancellation proceeding.

After the last presidential debate, the Republican nominee’s “such a nasty woman” utterance led to somewhat of a rallying cry.  Within minutes, #Nastywoman was trending across social media, and streaming of Janet Jackson’s “Nasty” spiked 250% on Spotify.

While many debated the societal and political implications of the comment, a few enterprising individuals recognized a business opportunity instead.  On the day following the debate, two federal trademark applications were filed for the phrase.  Mike Lin filed an application for NASTY WOMAN for “on-line retail store services featuring clothing, posters, pillows, mugs, bags, and mobile electronics cases and covers.”  On the same day, Colin Al-Greene filed a trademark application for NASTY WOMEN 2016 for use in conjunction with t-shirts.

Since then, eight more applications for NASTY WOMAN, and one application for NASTY WOMEN VOTE, have been filed with the USPTO.  Five of the NASTY WOMAN applications were filed by the same applicant–A.V.W. Inc.–for various goods, including one for a NASTY WOMAN body spray.  Interestingly, all five applications were filed as “use in commerce” applications, rather than “intent to use” applications.

A “use in commerce” application under Section 1(a) of the Lanham Act is an application for a mark already in use in connection with the goods or services identified in the application.  This type of application allows the applicant to establish a priority date earlier than the application filing date for a mark already in use.  However, as stated in the Trademark Manual of Examining Procedure, the relied upon use must be “a bona fide use” of the mark “in the ordinary course of trade.”  That is, the goods must be “sold or transported in commerce.”

A “use in commerce” applicant must submit a specimen illustrating actual use of the mark in commerce.  In many cases, a specimen may be a photo of a product that was sold bearing the mark, or a tag, product label, or packaging, for example.  A specimen is not a mere mock-up of the applicant’s intended use.

Following are some of the specimens filed in connection with A.V.W. Inc.’s NASTY WOMAN marks.

mug
Application No. 87212614 for coffee mugs.
notebook
Application No. 87218567 for spiral-bound notebooks.
bag
Application No. 87218577 for backpacks, book bags, sports bags, bum bags, wallets and handbags.

At the very least, these will likely lead to ornamental refusals, as the marks appear as mere ornamentation across the goods, rather than designators of source.  As far as whether these specimens indicate a bona fide use in commerce, they look like hastily drawn mock-ups to me.  What do you think?  Is this enough for a bona fide use?

 

Watching the morning news for even a few minutes can leave one struck by how we truly live in uncertain times. I suppose every generation has too, but is it more striking at this moment?

There are plenty of examples to draw upon to evidence the many uncertainties in our world, spanning extreme weather, politics, financial markets, safety, legal decisions, among others.

The field of trademark law is no stranger to uncertainty either. You will recall we wrote about Yes, No, and the Ever Confusing Maybe earlier this year, following our seventh anniversary.

The trademark clearance process can be particularly difficult to navigate, given the ever increasing crowdedness of the marketplace, our rapidly shrinking world, and the ease of trademark filings.

Necessary and appropriate preliminary and comprehensive trademark clearance searches represent imperfect snap shots of the trademark legal landscape at a particular point in time.

What many fail to appreciate is how quickly an open window of trademark availability promptly can be closed by the simple third party filing of a conflicting intent-to-use trademark application.

A best practice to keep in mind during the trademark clearance process is the importance of promptly filing an appropriate intent-to-use trademark application immediately after receiving the results of a successful clearance opinion; doing so maximizes the value of the investment in the search and minimizes the risk of intervening and conflicting third party trademark rights.

While we can’t be certain that others are thinking along the same branding and trademark lines as our clients at roughly the same time, we can be certain that priority determines trademark rights, and a day can make the difference, sadly I’ve seen it happen.

Perhaps the silver lining in the kind of trademark uncertainty we face as marketing and trademark types is that we’re not talking life and death, we’re talking about going back to the drawing board.

And, sometimes going back to the drawing board even more than a few times can yield a much better and more effective name anyway.

Do you have any scars to show for your trademark clearance activities?

Have you ever been burned, not taking seriously the certainty of how time is of the essence when it comes to trademark priority?

Ernst & Young, here is to hoping you can take a little joke about your new truncated name, EY:

We’ve written a lot about the potential hazards of brand truncation here, and when one of our talented guest bloggers brings this unfortunate story to our attention, we simply couldn’t resist spilling a little digital ink from our perspective.

According to Wikipedia: “‘Eh (/ˈ/ or /ˈɛ/) is a spoken interjection in English that is similar in meaning to ‘Excuse me,’ ‘Please repeat that’ or ‘huh?'”

EY, I think you catch my drift, eh?

As, Wikipedia also goes on to say: “It is also commonly used as a question tag, i.e., method for inciting a reply, as in ‘It’s nice here, eh?'”

The stated goal of the brand truncation is to “simplify” the Ernst & Young name: “Shortening our name will provide consistency and ease of use for EY practices and clients around the world.”

One of the common problems associated with truncation is the challenge of clearing a smaller version of the name and mark. So, it remains to be seen if moving from the two words, ten letters, and an ampersand in Ernst & Young, to two letters (that happen to be found at the end of lots of words, for example: blarney, baloney, malarkey, hokey, hooey, gooey, dicey, hey, they, obey, prey, money, honey, disobey, and attorney) will result in any trademark conflicts around the globe.

Ernst & Young has a fairly expansive intent-to-use federal trademark and service mark application for EY in multiple classes of goods and services, filed back in May 2013, so it hasn’t been examined yet. As it turns out though, further examination of the USPTO database reveals that Ernst & Young has been flirting with the EY truncation for some time, as evidenced by these prior federal registrations: (1) EY/GEMS, (2) EY/PASSPORT, (3) EY/AWS, (4) EY FINANCIAL PLANNER LINE, and (5) EY FINANCIAL PLANNING CENTER.

Perhaps these prior composite registered marks give Ernst & Young some added comfort that the path is clear for the truncation to EY. It will be interesting to see what dates of first use begin to populate the various classes of services in the pending intent-to-use application, as here in the U.S., it is permitted to submit dates of first use that end up pre-dating the filing date of an intent-to-use application.

Dear readers, any predictions on what will become of the more than two decade old logo, apparently a stylized EY, no less?

Will EY find a way to avoid trademark abandonment of this registered mark, or will it be comfortable relinquishing it to the public domain?

To the extent Ernst & Young has made a practice of branding gold watches or other jewelry as client gifts or retirement bling in the past, now it might need to reconsider.

Here’s a final question to ponder, would Ernst & Young have truncated to EY if .ey was, in fact, the real internet country code top level domain (ccTLD) for “Ekraysia” — or, does Goo.ey know something we don’t?

–Dan Kelly, Attorney

Last May, I reported on a Ninth Circuit Court of Appeals decision opining on the descriptiveness of the “Would You Rather…?” trademark registration.  Subsequent to the Ninth Circuit’s decision, the case returned to the United States District Court for the Central District of California and is now styled Spin Master, Ltd. v. Zobmondo Entertainment, LLC.  (Falls Media was the named party in the Ninth Circuit case, and evidently the predecessor to Spin Master.)

By way of brief recap, Spin Master owns U.S. Trademark Registration No. 2970830 for the mark WOULD YOU RATHER…? for use in connection with books and games, among other things.  They sued (rather, their predecessor sued) Zobmondo for trademark infringement, and Zobmondo counterclaimed to cancel Spin Master’s registration based upon fraud on the Trademark Office.  (If I recall correctly, Zobmondo actually sued first for declaratory judgment, but Spin Master is currently identified as the plaintiff, and is the natural plaintiff in any event.)

Spin Master’s predecessors, David Gomberg and Justin Heimberg, the developers of the Would You Rather…? game (and books), filed an intent-to-use trademark application for WOULD YOU RATHER…? in July 1997, and the registration did not issue until July 2005.  Along the way, Zobmondo made a failed attempt to oppose the application, and Gomberg and Heimberg ultimately used all five available extensions of time to file a statement of use to support the registration, the last four of which required “good cause.”  The essence of Zobmondo’s effort to cancel the registration boils down to an argument that Gomberg and Heimberg essentially strung along the Trademark Office while squatting on the trademark, and only put the mark to use in connection with games at the very last moment.

The district court issued an opinion last week granting summary judgment for Spin Master against Zobmondo’s cancellation counterclaim.  While Gomberg and Heimberg were not a model of efficiency in getting their product to market, the court found that they also did not embark on a course to commit fraud in procuring their trademark registration.  The court cited In re Bose liberally, with the key proposition being “subjective intent to deceive, however difficult it may be to prove, is an indispensable element in the [fraud] analysis.”

I would encourage trademark types to read the opinion, as it describes a not-too-uncommon fact pattern of a trademark applicant encountering a bumpy road in charting a path to market, and how this creates risk for the resulting registration to be attacked down the road.  While the applicant here landed on its feet (so far), the facts were sufficient to allow the adverse party to take the issue to judgment.  Better to have a prosecution history that doesn’t invite a cancellation in the first place.

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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.