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
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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:
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You are “local.”
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You are the #1 fan of the #1 team.
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You registered a trademark with the State.
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You obtained a COLA label approval for your label.
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You have been using a name in your advertising for years.
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You donate money to the school.
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You got approval from alumni (not even from famous alumni).
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You have sold that beer at the school before.
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You filed an application to register a trademark with the USPTO.
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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. _______________________________________________________________________