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?

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.

 

When an application has been refused registration in view of another’s prior filed mark, one way to resolve the issue is through a consent agreement wherein the registrant consents to the registration and the parties set out the reasons why the parties believe that there is no likelihood of consumer confusion between the marks.  A recent precedential TTAB decision, however, found that in particular circumstances, “no means no” when it comes to trademark registration — even when there is consent.  Sometimes a poorly crafted consent agreement leaves no brewer hoppy.

The procedural background here is a mess, but bear with me as I travel back in time because this demonstrates why you should file an intent-to-use trademark application as soon as possible (spoiler alert:  the earliest filer wins this one).

A Massachussetts brewery, Bay State Brewing Company, Inc., filed a trademark application for TIME TRAVELER BLONDE for beer on January 17, 2013.  The filing claimed a first use date at least as early as January 1, 2012 and the specimen filed with the application is shown below (which as a printer’s proof was surprisingly not refused, see TMEP 904.04(a)).  It was hard to find a good photo showing use of the mark with BAY STATE.

baystatetimetraveler

However, another Northeast based brewery, A&S Brewing Collaborative LLC in Vermont, had already filed an intent-to-use application for TIME TRAVELER for beerale, lager.  A&S Brewing provided a specimen showing use of the mark on a shandy and claimed a first use date that was 11 months after Bay State Brewing’s claimed first use date.   A&S Brewing’s TIME TRAVELER published for opposition a few weeks after Bay State Brewing filed its application.  Bay State Brewing Company requested an extension of time to oppose, which was granted until April 12, 2013.

Meanwhile, Bay State Brewing’s application received an office action with a potential refusal to register over A&S Brewing’s prior pending application.  Bay State Brewing’s attorney filed a response on April 12, 2013 (same day as their deadline to oppose) that included a copy of the consent agreement executed earlier that month.  It was filed the same day as Bay State Brewing Company’s deadline to oppose.  Bay State Brewing Company never opposed the application as the parties entered into a consent agreement, executed on April 10, 2013, whereby Bay State Brewing agreed not do so — unnecessarily foregoing its right to oppose or petition to cancel the registration even if the consent agreement was not accepted.   So, A&S Brewing received a certificate of registration.

The consent agreement basically says that the parties do not believe there is a likelihood of confusion because one party uses it on a blonde beer with BLONDE in a limited geographic area, the other uses it on a shandy, the trade dress is different, and they are used with each other’s house marks, which are different.   The same response included a disclaimer of the term BLONDE, which as many of you know is a type of beer.

timetravelershandy

If both of these were on the shelf and someone asked you to pick up some TIME TRAVELER, would you be confused?

The Trademark Office refused to accept the consent agreement and issued another office action.  Bay State Brewing replied with a copy of a significantly more robust “consent agreement” with an effective date of April 10, 2013.  The Trademark Office again refused to accept the consent to registration agreement, and the Board confirmed that the consent agreement did not overcome the likelihood of confusion between the marks as filed.

It seems to me that parties only needed one of the following:  a restriction on the Registrant from selling in the geographic region identified in the consent agreement or an amendment to one of the applications to include the brewery’s house mark.  A concurrent use proceeding could have been instituted that would limit the registrations to geographic regions, and I believe we will start to see more of these types of proceedings being used in the craft brewery industry.

Further, the parties rely on the trade dress and use of the respective brewery’s house brand on the packaging — but neither marks as filed with the Trademark Office include the house brand.  Bay State could have filed for BAY STATE TIME TRAVELER BLONDE or could have forced A&S Brewing to amend their own application to THE TRAVELER BEER CO TIME TRAVELER SHANDY by keeping the option open to oppose, if the U.S. Trademark Office did not accept the consent agreement.

It is important to remember that the refusal to register the mark does not mean that Bay State cannot use the mark going forward.  A&S Brewing could potentially challenge their use of the mark (assuming they didn’t agree not to do so), but Bay State likely has priority in right to use in some areas based on its use date, which is earlier than A&S Brewing’s filing date.

Morals of the story:  the tortoise doesn’t win the race to trademark protection and be careful with how you draft consent agreements.

 

 

–Dan Kelly, Attorney

Last year, I commented on the ubiquity of blue ovals in branding.  Today, I’m wondering about the BLACK trend in whiskey branding.  Many whiskey distilleries produce BLACK-branded labels:

Of course, some don’t use the word BLACK, but do use black labels:

Even when these companies do not use the word BLACK in a particular brand, it is not difficult to find them in an Internet search using the terms “black label.”

Remarkably, Diageo actually owns the US registered trademark BLACK LABEL for use in connection with scotch whisky, which it uses in the Johnnie Walker line.  While it seems that none of its whiskey competitors use the word mark BLACK LABEL, many of them freely use black labels (obviously), and consumers search for things like “Maker’s Mark Black Label” all the time.  So, while Diageo “owns” the BLACK LABEL trademark, that trademark is not particularly good at identifying Diageo or Johnnie Walker as the source of the BLACK LABEL whisky.