Craft Beer and Trademarks – 10 Takeaways from the 2017 College Football Season

Author: Michael Kanach

Nothing pairs quite like beer and football. As we approach Super Bowl LII, there is no shortage of articles informing businesses how to avoid a trademark dispute with the National Football League (NFL), particularly regarding the registered trademark “Super Bowl.”1 2 3 4 5

With advertisers paying millions of dollars for a 30 second advertisement spot during the “Big Game,” there are millions of reasons for the NFL to ask companies to cease and desist using its trademarks when used without authorization. AdAge estimates that marketers will have spent about $5.4 billion total in advertising over these 52 years of Super Bowls.6 An example of one brewery planning to make a big spend on Super Bowl Sunday is Gambrinus’ Spoetzl Brewery of San Antonio, Texas, one of the largest craft breweries in the nation.7 They are prepared to spend $1.2 million for a 30-second advertisement for its Shiner Bock beer brand to air across the State of Texas during the Super Bowl.8

According to The Brewers Association, there were more than 6,000 breweries operating in the United States in 2017.9 But, of course, not all breweries have the budget to spend on a television advertising spot during the Super Bowl, so craft breweries often have to come up with creative ways to get noticed. One way breweries have worked to obtain a local following is to support their local teams, professional and collegiate, especially during the football season. Sometimes, in this fandom, breweries (inadvertently) cross over the line into using their favorite team’s intellectual property without approval.

The following four stories from the 2017 college football season provide trademark and branding lessons for craft breweries who want to use trending themes, viral stories, names, and images from their local institutions – to sell beer.

As the images and stories below demonstrate, trademarks are not simply names, logos, and slogans. A trademark can be anything that indicates the source of a product or service. As these packages show, a trademark can be a color scheme, distinctive font, single letter, image (e.g., a train or a famous building on campus), trending hashtag, viral event, and even the design of a special necklace. The main lesson you can learn from these stories about craft breweries using others’ trademarks is to obtain prior written approval from the trademark owner.

Purdue University wins injunction over Boilermakers Beer:

In June 2016, an individual in Naples, Florida, obtained a trademark in the State of Indiana for the marks “Purdue Boilermakers Brewing” and “Boilermakers Beer” claiming first use in 2016.10 According to the defendant’s website, “Sports Beer Brewing Company™ is an intellectual property holding company consisting of a portfolio of sports trademarks, registrations and service marks for sports teams through out (sic) the United States.”11 It’s not clear whether Sports Beer Brewing Company actually brews beer themselves, since their website says they “will contract with a local micro-brewery in your area for a tasting to decide what type of beer you want to brew.”12

The Trustees of Purdue University own several federally registered trademarks, including “Purdue,” “Boilermakers,”13 and various images of trains or locomotives.14 One such registered trademark for BOILERMAKERS claims a first use in commerce at least as early as in 1959, decades before Sports Beer Brewing Company filed an application to register the trademark with the state of Indiana in 2016.15 The Trustees of Purdue University filed a lawsuit in Tippecanoe County, Indiana, to enforce their trademarks.

Purdue licenses its logos and trademarks to Peoples Brewing Company, located in Lafayette, Indiana, for labeling on a beer named “Boiler Gold.” Below left, is an image of the Boiler Gold beer can’s label,16 which contains authorized references to Purdue, a train, and the distinctive letter “P” and the school’s color scheme of “campus gold” and black.17 The infringer’s logo is shown below right, with the University’s name on a black background and underneath a gold and white-colored train.

On November 9, 2017, Purdue University obtained an injunction against Sports Beer Brewing Company and its owner Paul Parshall. The court found the defendant’s trademarks were confusingly similar to Purdue’s trademarks. The injunction read, in part, that Paul Parshall was:

… enjoined to immediately discontinue using or offering or licensing the terms “Purdue”, “Boilermakers”, “Boilermakers Beer” and “Purdue Boilermakers Brewing” or any other marks which feature the words “Boilermakers” and/or “Purdue” for any commercial purpose.

Sports Beer Brewing Company’s ownership of a state trademark did not prevent the university from obtaining an order enjoining it from selling products with the school’s names, logo, and color scheme. According to the defendant’s website, http://www.sportsbeerbrewing.com/, defendant still owns numerous other trademarks for beer names under a “claim your brand” link. These names include the following schools: Pitt (Pitt Panthers Brewing Co • Pitt Panthers Beer) and the University of Miami (Miami Hurricanes Brewing • Canes Beer), which are discussed below for other reasons.18

“Hail to Pitt” (University of Pittsburgh) – #H2P Beer Labels Removed:

In a separate dispute related to the University of Pittsburg (a.k.a. Pitt), a Pennsylvania craft brewery’s use of Pitt’s trademarks is a lesson for brewers to make sure to get written approval from the university before making any substantial investments in labels, bottles, and cans. Voodoo Brewery, located in Meadville, Pennsylvania, began selling a beer under the name “#H2P” with cans designed in Pitts’ colors and script and an image of a cathedral.19 This name “H2P” is short for “Hail to Pitt” and was a trending hashtag for the university during the college football season.20 Pitt owns a registered trademark for “H2P,” which was registered in 2011 and claimed a first use in commerce in 2010. In addition, Pitt owns at least two registered trademarks for “Pitt” with stylized font, and with a distinctive letter “P,” claiming a first use in commerce at least as early as 1990.21 22 Pitt’s colors are royal blue and yellow (or alternatively navy blue and gold).23 The Cathedral is focused throughout the University’s advertising, as shown in the school’s official “Graphic Standards.”24 The letter “P” in the brewery’s “H2P” logo appears to be the same “P” in the University’s registered “Pitt” logo, which has been used for decades.25

According to an October 2017 article in the Pittsburgh Post-Gazette, Voodoo Brewery’s brewmaster was a former Pitt student and involved in athletics, and the brewery believed it had the University’s approval because the brewery had previously sold these beers on campus.26 However, there was nothing in writing from the University approving the packaging, so the brewery was forced to cease and desist using the schools trademarked hashtag, distinctive name, images, and color scheme.

University of Miami Hurricanes – Turnover Chain IPA Changes Name to “Chains”:

Like a viral hashtag, craft breweries tend to follow trending stories relating to their local teams and try to incorporate them into their beer names, labels, and designs. In 2017, J. Wakefield Brewing, in Miami, Florida, announced that it would brew a beer called “TURNOVER CHAIN” IPA.27 The “Turnover Chain” was a reference to the 2017 Miami Hurricanes’ football team’s over-sized, Cuban-linked, gold chain with a large “U” (for Miami University) in the school’s colors: orange and green. This chain is ceremoniously placed around a defensive player’s neck to wear on the sideline after forcing a turnover.

On November 16, 2017, the University of Miami filed a trademark application for TURNOVER CHAIN for various goods (although not including beer) claiming a date of first use in commerce in September 2017. (U.S. Trademark Serial No. 87688132). In addition, the University of Miami’s “Visual Identity Manual” explains that the University’s colors are orange and green and shows examples of the “U” logo, with orange on the left and green on the right.28

 

 

 

 

 

 

 

J. Wakefield Brewing in Miami, Florida filed a Certificate of Label Approval (COLA) with the Alcohol and Tobacco Tax and Trade Bureau (TTB), which was approved on November 19, 2017.29

An article on SouthFlorida.com’s website said that a former Miami Hurricane’s football player was on board and promoting the Miami-themed beer.30 In a separate Press Release in Brewbound, the brewery discussed how the founder and brewmaster Johnathan Wakefield was a big Miami Hurricane’s fan and met with a former player. But the brewer’s status as a true fan was not enough. Neither was label approval from the government or concept approval from a former football player. The brewery did not have approval from the University.

Shortly after initial announcements of the “TURNOVER CHAIN” beer, J. Wakefield Brewing began selling a product named “Chains” which no longer included the word “TURNOVER” and no longer included a green/orange color scheme. In an article in Brewbound, a disclaimer was included and the following explanation was provided related to the beer name: “Chains, formerly known as Turnover, is not affiliated with any educational institution and is not being marketed to college students.”31

Iowa University – “Iowa City Wave” Milkshake IPA:

Ending on a high note, the 2017 college football season had a true feel-good-story based in Iowa. At the end of the first quarter, at each of the University of Iowa home football games, the entire stadium full of more than 60,000 fans would turn towards the new UI Stead Family Children’s Hospital that overlooked the field.32 The fans inside Kinnick Stadium would wave to the children and their families inside the hospital, who would wave back. If you have not seen it yet, watch a video.33 It’s powerful.

Taking this trending, season-long, feel-good, local story and imagining a way to support their local team and local children, Backpocket Brewing in Iowa decided to brew a beer and donate the proceeds to the Children’s Hospital.34 After selling the “Iowa City Wave” milkshake IPA for a limited time, the brewery delivered a check of over $600 to the hospital, posting on Twitter the following message on November 20, 2017: “Thank you everyone who came out to the taproom & enjoyed our milkshake IPA to help us raise over $600 for the @UIchildrens #IowaCraftBeer.”35

While it may not be authorized by,36 sponsored by, or affiliated with the university,37 it is nice to see the donation being put to good use. It is not clear whether the brewery and the University or the hospital have been in contact regarding this beer name. This is a unique situation – but not because the brewery is making donations to the Children’s Hospital. For example, the outcome of the trademark disputes related to Purdue, Pitt, and Miami-branded craft beer would not have been different even if proceeds of sales were donated. Rather, it is a unique situation because it is not clear who owns “The Wave.” At this time, the University has not filed an application to register a trademark containing the word “Wave” for any goods and services. However, this new tradition of the “Wave” is likely to continue into next football season and it may become a clear indication of source for the University and/or the Children’s Hospital.

Conclusion:

The following do NOT automatically authorize you to use your favorite college’s trademarks:

  1. You are “local.”
  2. You are the #1 fan of the #1 team.
  3. You registered a trademark with the State.
  4. You obtained a COLA label approval for your label.
  5. You have been using a name in your advertising for years.
  6. You donate money to the school.
  7. You got approval from alumni (not even from famous alumni).
  8. You have sold that beer at the school before.
  9. You filed an application to register a trademark with the USPTO.
  10. You are donating all proceeds of all sales.

In conclusion, get approval from the owner of the trademark. Get it in writing. And then make sure you comply with the university’s branding requirements.If you do not have approval, check the branding requirements to familiarize yourself with the school’s brand so you can make sure you do not step over the line.

While each of the examples discussed above relate to universities, these lessons apply to the major leagues as well. For example, Boulevard Brewing was one of the first breweries to work with a Major League Baseball team when it became the official craft beer sponsor of the Kansas City Royals.38 39 In the San Francisco Bay Area, San Francisco’s Anchor Brewing partnered with both MLB’s San Francisco Giants (“Los Gigantes” Mexican Style Lager) and the NBA’s Golden State Warriors – using team logos and color schemes in their packaging.40 41 In addition, San Jose’s Gordon Biersch partnered with the NHL’s San Jose Sharks by creating a special “Chum” red dry hopped ale in team colors and including the team logo.42 These examples of official sponsorships and authorized uses of trademarks include official announcements and press releases.

 

 

 

 

 

 

Michael Kanach is a Partner in the firm’s Intellectual Property and Food & Beverage practice groups, and a frequent speaker and writer on craft beer trademark law. For more information about Gordon Rees Scully Mansukhani LLP’s Intellectual Property Practice Group, including the firm’s specialization in the craft beer industry, please visit www.grsm.com/practices/food-beverage/craft-breweries and https://www.gordonrees.com/practices/intellectual-property.

Mr. Kanach is also a member of the firm’s Entertainment, Fashion, Media & Sports practice group. For more information, please visit https://www.gordonrees.com/practices/entertainment-media-sports.
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1 “How to Use the Super Bowl to Promote Your Business – Not!” Small Business Trends, Joshua Sophy, January 28, 2018. https://smallbiztrends.com/2018/01/super-bowl-trademark-rules.html
2 “Super Bowl or the Game That Shall Not Be Named!” Hop Law, Garner & Ginsburg, P.A., December 20, 2017. http://www.hoppylawyers.com/super-bowl-game-shall-not-named/
3 “The NFL Pretending Trademark Law Says Something It Doesn’t Leads To Hilariously Amateurish Ads For ‘The Big Game’ – from the the-game-that-shan’t-be-named dept” Tech Dirt, Timothy Geigner, January 29, 2018. https://www.techdirt.com/articles/20180126/09444139092/nfl-pretending-trademark-law-says-something-it-doesnt-leads-to-hilariously-amateurish-ads-big-game.shtml
4 “Making Fair Use of the Super Bowl Trademark” Duets Blog, Steve Baird, September 25, 2017. https://www.duetsblog.com/2017/09/articles/advertising/making-fair-use-of-the-super-bowl-trademark/
5 “Securing necessary copyright and trademark rights for broadcasts and promotions related to the NFL championship games and Super Bowl 52” Lerman Senter PLLC (Lexology), January 11, 2018. https://www.lexology.com/library/detail.aspx?g=92ce3502-82e6-4768-8721-d279df297589 http://www.lermansenter.com/assets/attachments/758.htm
6 “Big Game Punting: Super Bowl Scores $5.4 Billion In Ad Spending Over 52 Years” AdAge, Bradley Johnson, January 11, 2018. http://adage.com/article/special-report-super-bowl/super-bowl-ad-spending-history-charts-52-years/311881/
7
8 “Craft Brewing and Distilling News for January 24, 2018” Shanken News Daily, January 24, 2018 http://www.shankennewsdaily.com/index.php/2018/01/24/20038/craft-brewing-distilling-news-january-24-2018/
9 “2017 Craft Beer In Review” Press Release, The Brewers Association, December 13, 2017. https://www.brewersassociation.org/press-releases/2017-craft-beer-review/
10 Indiana Government website trademark search page: http://www.in.gov/apps/sos/trademarks/
11 http://www.sportsbeerbrewing.com/claim-your-brand-.html
12 http://www.sportsbeerbrewing.com/about-us.html
13 U.S. Trademark Registration No. 4497301.
14 U.S. Trademark Registration Nos. 2023046 and 2023047.
15 https://www.whois.com/whois/sportsbeerbrewing.com
16 TTB ID 17283001000314 https://www.ttbonline.gov/colasonline/viewColaDetails.do?action=publicFormDisplay&ttbid=17283001000314
17 https://www.purdue.edu/brand/downloads/508_Quick-Brand-Guide-PDF-300.pdf
18 http://www.sportsbeerbrewing.com/claim-your-brand-.html (last viewed on January 29, 2018).
19 “Pitt drops trademark hammer on Voodoo Brewery’s Pitt-themed beer” Pittsburgh Post-Gazette, Adam Bittner, October 19, 2017. http://www.post-gazette.com/sports/Pitt/2017/10/19/h2p-beer-pitt-trademark-voodoo-brewery-pittsburgh-panthers-homecoming/stories/201710190025
20 H2P (standard character mark) for magnets and label pins owned by the Registrant University of Pittsburgh-Of the Commonwealth System of Higher Education (“Pitt”) (U.S. Trademark Registration No. 4014150)
21 PITT (in script lettering) for football helmets (U.S. Trademark Registration No. 4960354).
22 PITT (in script lettering) for numerous goods, including shot glasses, drinking glasses, and miniature toy helmets (U.S. Trademark Registration No. 4960171).
23 http://www.post-gazette.com/sports/Pitt/2017/06/27/Pitt-colors-change-royal-blue-and-yellow/stories/201706270143 “Will Pitt change its colors back to royal blue and yellow?” Pittsburgh Post-Gazette Kevin Stankiewicz, June 27, 2017.
24 http://www.communications.pitt.edu/Graphic-Standards.pdf
25 PITT (in script lettering) for football helmets claims to have a first use in commerce at least as early as 1973 (U.S. Trademark Registration No. 4960354).
26 http://www.post-gazette.com/sports/Pitt/2017/10/19/h2p-beer-pitt-trademark-voodoo-brewery-pittsburgh-panthers-homecoming/stories/201710190025
27 “Miami Hurricanes’ Turnover Chain becomes a beer” SouthFlorida.com, Talia J. Medina, November 15, 2017. http://www.southflorida.com/restaurants-and-bars/drinking/sf-j-wakefield-turnover-chain-miami-canes-beer-20171115-story.html
28 The University of Miami’s “Visual Identity Manual” https://ucomm.miami.edu/_assets/pdf/tools-and-resources/UMiami_IDguide_March_2015.pdf (Updated March 2015)
29 Alcohol and Tobacco Tax and Trade Bureau (“TTB”) of the U.S. Department of the Treasury’s Certificate of Label Approval (“COLA”) TTB ID: 17320001000412, approved on November 19, 2017. https://www.ttbonline.gov/colasonline/viewColaDetails.do?action=publicDisplaySearchBasic&ttbid=17320001000412
30 See footnote 27: “The IPA will be brewed in partnership with former Miami Hurricanes linebacker D.J. Williams, who was a member of the 2001-2002 national championship team.”
31 “J. Wakefield Brewing to Release Chains New England-Style IPA” Brewbound, Press Release, Dec. 11, 2017. https://www.brewbound.com/news/j-wakefield-brewing-release-chains-ipa
32 “The Iowa Wave through a child’s eyes” USAToday, George Schroeder, November 2, 2017. https://www.usatoday.com/story/sports/ncaaf/2017/11/02/iowa-wave-through-childs-eyes/826378001/
33 “Iowa Hawkeyes’ new tradition is more than just a wave” ESPN, Published on Sep 30, 2017. https://www.youtube.com/watch?v=w7UqYD_owgY
34 “Iowa City Wave, Backpocket’s newest beer, will benefit the UI Children’s Hospital” Little Village Magazine, Emma McClatchey, November 2, 2017. http://littlevillagemag.com/iowa-city-wave-backpockets-newest-beer-will-benefit-the-ui-childrens-hospital/
35 https://twitter.com/BackpocketBrew/status/932722791710937088
36 See footnote 34. “Overton said he and other Iowa City natives on staff had been meaning to make a beer that pays homage to Hawkeye football. With Iowa City Wave, they not only nabbed a trademark-free title, but a way to both honor and contribute to the growing awareness of children’s hospital patients and their families by Hawk fans.”
37 According to a search of the University’s  searchable website portal, there do not appear to be any breweries listed as licensed: http://portal.uilicensing.com/index.cfm/licensee/search
38 “The Kansas City Royals have named an official craft beer. Will other teams follow?” The Washington Post, Fritz Hahn, March 10, 2017. https://www.washingtonpost.com/news/food/wp/2017/03/10/the-kansas-city-royals-have-named-an-official-craft-beer-will-other-teams-follow/ (“The Kansas City Royals have named Boulevard Brewing their official craft beer partner. According to Major League Baseball, it’s the first time a team has had an official craft beer.”)
39 https://www.boulevard.com/partner/royals/
40 “Anchor Brewing’s Golden Warriors beer for the Dub Nation” The Mercury News, Jay R. Brooks, March 27, 2017, updated March 30, 2017. https://www.mercurynews.com/2017/03/27/anchor-brewings-golden-warriors-beer-for-the-dub-nation/
41 http://www.nba.com/warriors/anchor?mpweb=1009-2132-44620
42 “Gordon Biersch’s new San Jose Sharks beer is called ‘Chum’” The Mercury News, Sal Pizarro, September 8, 2016, updated September 9, 2016. https://www.mercurynews.com/2016/09/08/gordon-bierschs-new-san-jose-sharks-beer-is-called-chum/

Craft Beer Attorneys Can Describe Their Services As Craft Beer Attorneys

Author: Michael Kanach

In an interesting case for intellectual property lawyers specializing in craft beer, distilled spirits, and wine, the trademark dispute between a dozen law firms over the use of the phrase “CRAFT BEER ATTORNEY” is now over.

Craft beer attorneys everywhere are relieved. They can go back to describing themselves as CRAFT BEER ATTORNEYS without the threat of a lawsuit due to a pending application to federally register the trademark for the phrase that describes their legal services.

Like other descriptive terms in the craft brewing industry, such as BREWING COMPANY, BREWERY, ALE, or NE IPA, and descriptive terms in the legal industry, such as ATTORNEY, ESQ. or LAW FIRM, these terms may be used without the apprehension of suit for trademark infringement when used to accurately describe one’s goods or services. Typically, an attempt to register as a trademark a generic and merely descriptive word or phrase will be refused by the United States Patent and Trademark Office (“USPTO”). The public policy behind refusing registration of these words and phrases – or disclaiming them – is to permit individuals and companies to describe their goods and services in fair competition.  In addition, such words and phrases do not indicate a single source of those goods and services, so they do not function as a trademark.

Here, the applicant, the law firm of The Craft Beer Attorney, APC, filed an application to register the trademark CRAFT BEER ATTORNEY in connection with legal services. The application was filed almost three years ago, on January 15, 2015 (Serial No. 86504533). The USPTO sent an office action refusing the mark as (1) generic, and, alternatively, (2) merely descriptive, and (3) lacking sufficient evidence of acquired distinctiveness. This was followed by the Applicant’s response, which overcame the refusals, and a notification of publication was issued on December 16, 2015. On January 5, 2016, the mark was published in the Official Gazette for the purpose of opposition “by any person who believes he will be damaged by the registration of the mark.”

Who would file an opposition? It turns out that eleven law firms filed oppositions in the allotted time: (1) Funkhouser Vegosen Liebman & Dunn Ltd.; (2) Nossaman LLP; (3) GrayRobinson, PA; (4) Tannenbaum Helpern Syracuse & Hirschtritt LLP; (5) Lehrman Beverage Law, PLLC; (6) Davis Wright Tremaine LLP; (7) Ward and Smith PA; (8) Strike & Techel LLP; (9) Martin Frost & Hill PC; (10) Spaulding Mccullough & Tansil LLP; and (11) Wendel Rosen Black & Dean LLP (See USPTO Trademark Trial and Appeal Board (“TTAB”) Opposition No. 91227647 (parent)).

In their Oppositions, the other law firms argued that the trademark CRAFT BEER ATTORNEY was generic and/or descriptive, among other things. A generic name is entitled to no trademark protection, as it is part of the common language that we need to identify such services or goods. A generic name refers to the services or goods, rather than to the mark owner’s brand for the services or goods. A descriptive name is a word or phrase that identifies or describes some aspect, characteristic, or quality of the services or goods to which the mark is affixed in a straightforward way that requires no exercise of imagination to be understood. Descriptive words must acquire distinctiveness or secondary meaning to be protectable as a trademark. In other words, the consumers must come to recognize the mark as designating a single source.

As the Ninth Circuit’s jury instructions state: “Descriptive marks are entitled to protection only as broad as the secondary meaning they have acquired, if any. If they have acquired no secondary meaning, they are entitled to no protection and cannot be considered a valid mark.” Ninth Circuit Manual of Model Civil Jury Instructions, 15.11(last modified September 2017).

These twelve parties litigated before the TTAB for more than a year and a half, and participated in discovery.

On October 31, 2017, the Applicant’s representative, Candace L. Moon, filed an Express Abandonment of Application Serial No. 86504533, seeking to withdraw the application and end the dispute over the name. As a result of the Applicant’s abandonment, judgment was entered against applicant. In a November 7, 2017 Board decision sustaining the oppositions filed by the eleven law firms, the TTAB held that oppositions were sustained and registration to applicant was refused.

Now, all of these attorneys can get back to work representing their craft beer clients and describing themselves as CRAFT BEER ATTORNEYS without the potential threat of a lawsuit.

For more information about Gordon Rees Scully Mansukhani LLP’s Intellectual Property Practice Group, including the firm’s specialization in the craft beer industry, please visit www.grsm.com/practices/food-beverage/craft-breweries intellectual property law. Mr. Kanach is a Partner in the firm’s Intellectual Property and Food & Beverage practice groups, and a frequent speaker and writer on craft beer trademark law.