UPDATE: In case you’re wondering, the microscopic text in the lower right corner of the billboard reads like a disclaimer: “ENJOY IN MODERATION.” How’s that for a messaging mixed drink?
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.
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.
My daughter captured some artsy pics from our beautiful Fall weekend, can you guess where we were? I’ll give you three visual hints:
And, are our hats about to become limited edition collectors items, given these preexisting ones?
Although I couldn’t locate any non-verbal, non-traditional trademark registrations for the design carrying the words Miller High Life, the entire composite is registered for beer. A search of federal trademark applications and registrations owned by MillerCoors surprisingly shows a pretty small number of non-verbal trademarks, given the size of the portfolio. There is this one though, but I think you may need to click on this link to know what brand typically appears inside of it:
If you had to choose, which non-verbal design would you consider more unique, distinctive, and worth protecting? The pictures above provide my answer, what’s yours?
Boston Beer Corporation, makers of Samuel Adams beer, received approval for its intent-to-use trademark application for the word mark BOSTON 2024 for “beer,” which generated some news buzz in light of the city’s bid for the 2024 Olympics. While the move was praised as a smart business strategy to grab the name before other brewers, the legal strategy may need a little work to maintain Sam Adams’ priority in the mark.
To file an intent-to-use trademark application in the United States, the applicant must have a bona fide intention to use the mark – and that bona fide intention must remain until the applicant shows use of the mark with respect to the applied-for goods or services. As the chosen host city will not be decided until 2017 and the Olympics would not happen for another 7 years, use of the mark within three years of the Notice of Allowance (likely to be issued this year) may be difficult. A challenge to the application may be raised by a third party if the applicant fails to continue to have that bona fide intention – or did not have it at the start of the application. Proof showing the bona fide intention include marketing plans, promotional activities, research and development activities, seeking government approval, and other evidence to show that the applicant is actively pursuing use of the mark in commerce. Here, Sam Adams should document discussions with the Boston 2024 planning committee, its marketing plans, and that it’s moving along with seeking government approval for labeling of the beer. Nevertheless, after three years from the Notice of Allowance, Sam Adams would have to show use or refile its 2015 application, at which time it would lose the priority of the 2015 application which would be deemed abandoned. Sam Adams may want to consider selling beer under the mark as soon as the host city is announced (or earlier) and continue to sell beer bearing the mark until the Olympics to avoid a challenge on the basis of abandonment.
Now, on the other hand, could the filing kill Boston’s chances to be a host city? Companies often, and rightly, take into consideration other filings and registrations when considering a new mark or brand. The International Olympics Committee (“IOC”) and its local affiliates, which are extremely protective of their trademark rights as we have discussed at least here and here, likely will consider protection for the host city’s name, as they have done in the past with at least Beijing 2008, Vancouver 2010, London 2012, and Sochi 2014. Each of these registrations included beer at the time of the Games in their respective city. Further, a little known statutory provision, 36 U.S.C. 220506, provides a cause for civil action for use of any trademark falsely representing association with the IOC.
Even if Sam Adams ultimately does not acquire a registration, maybe the smartest part of this business strategy is the ability for Boston Beer to position itself at the negotiating table for sponsorship of the Olympics, when otherwise a “craft brewery” like Sam Adams may be left out of the negotiating conversation in favor of the likes of multinational brewing companies like SABMiller (owners of Miller and Coors) and AB InBev (owners of Budweiser). However, until the registration is granted, the intent-to-use trademark application is only assignable if Sam Adams also transfers that portion of the business pertaining to the trademark.
Of course, in an election cycle, they could drop the current connection to the Olympics and sell beer celebrating the Samuel Adams of the future. Or the 250th Anniversary of the meeting of the First Continental Congress. Or the 40th Anniversary of Samuel Adams beer.
What do you think – was this a smart move by Sam Adams to try to capture this mark at this time?
MillerCoors is currently running this Lite Beer ad, promoting the limited edition original can, and taking credit for inventing the light beer category, way back in 1973.
It is a great reminder that despite Miller’s determined and long-protracted litigation over its attempt to own the word LITE as a trademark for beer, in the end, it was unsuccessful because the misspelled word LITE was found generic — along with the correctly-spelled word LIGHT — for a type or category of beer, namely, low calorie beer.
What MillerCoors does own — as a federally-registered trademark — is the visual representation of the word LITE in the unique script to the right (with the generic word LITE disclaimed):
With the phonetically identical words LITE and LIGHT generic for low calorie beer, and part of the public domain for anyone to use, it isn’t surprising that others have gotten into the market with their own federally-registered versions of the misspelled LITE category term for beer: Falstaff Lite, Lite My Fire, Mike’s Lite, Arctic Lite, Lite is Good, and Duff Lite.
Marketing types, I ask you, how much is that credit worth to a brand?
Enough to make your main competitor spell the word correctly?
Trademark types, can you think of other similar examples?
Launched a few months ago, it’s called the bowtie can, because it appears to emulate Budweiser’s well-known bowtie brand icon, but the formal description of the Anheuser-Busch beer can at the USPTO is a bit more clumsy and technical:
“The mark consists of packaging for the goods, namely, beverage package for the goods consisting of a three dimensional shape of a beverage package that is generally cylindrical in shape but where the sides of the package are indented approaching the center of the package with a curve at the bottom of the sides of the can design.”
Here is a link to the black/white drawing of the mark. The application claims ownership of these related registrations: U.S. Reg. Nos. 1544754, 3757001, and 4144329, all bowtie related marks, so it is curious that the formal description of the mark does not reference the relationship to this recognized and inherently distinctive trademark shape.
The beer can shape initially was approved as a non-traditional trademark for publication at the USPTO, but as of a few weeks ago, the application was “returned to the Examining Attorney for further review,” so stay tuned on how this one turns out.
Speaking of beer containers, with the substantial investment of advertising dollars in promoting the New Miller Lite Beer Bottle (voluminous billboard and television ads), I would have expected MillerCoors to seek registration of the bottle shape as a trademark, but my search for any pending application came up dry. Do you suppose this has anything to do with the fact that the new bottle design apparently “adds a contoured grip to make it easier to hold“?
Or perhaps this YouTube video didn’t help either, in which consumers comment on the “new look” of the “toned up” Miller Lite bottle as “awesome,” “unique and innovative,” “sexy and sleek,” and “re-energizing of the brand” — all good so far, but then unfortunately, the arguably functional comments about the improved “grip” were not edited. Some things are better left unsaid (if one wants to preserve non-traditional trademark protection), as we’ve said before.
Although I haven’t handled Budweiser’s bowtie can yet, I’m thinking it’s probably easier to grip too, but no point going there if you’re Anheuser-Busch, why risk the danger of making grip a selling point, especially if you want to keep your non-traditional trademark options open?
Although I haven’t seen the ads in question, one blogger wrote back in May about the bowtie cans: “They are, as advertised, ‘easy to grip,’ with a good feel in your hand.” And, surprisingly Anhuser-Busch references grip as a selling point in this press release:
“This can is certainly a conversation starter: eye-catching, easy-to-grip, trendy and – according to our research – very appealing to young adults,” McGauley said. “It’s a beer can like no other.”
So, stay tuned to see whether a functionality refusal rears a clydesdale’s head at the USPTO, upon “further review.”