No wait! Wrong Material Girl!
As the craft beer industry continues to gain momentum and the market crowds, unique, clever and creative beer and brewery names will become harder to find. In 2015 alone, just over 4,300 trademark applications containing the term “beer” were filed with the U.S. Patent and Trademark Office. Last year, this number increased by over 23 percent to nearly 5,400. 2017 remains on track to match or surpass this number of new trademark filings, with well over 900 applications already on record.
Brand owners outside of the beer industry are also beginning to take notice and are jumping on board to protect their valuable trademarks. Certain products like alcohol carry a heightened sensitivity — trademark owners are fearful of their brands being confused, diluted or even tarnished by a possible association with the promotion or sale of alcoholic beverages. Brewers should be aware that their use of new beer names that reference or call to mind famous or well-known trademarks may not be taken lightly.
On March 3, 2017, MG Icon LLC, a joint entity owned by “Material Girl” Madonna, filed an opposition against a trademark application for “Malterial Girl” (pun intended) owned by Weathered Souls Brewing Co. in San Antonio, Texas. MG Icon argues that “Malterial Girl” is nearly identical to its famous “Material Girl” clothing and lifestyle brand. In addition, MG Icon also claims that because the brand is targeted toward “teens and young women,” it has made a conscious decision to refrain from an association or endorsement of any alcoholic beverage. MG Icon condones Weathered Soul’s clever “malt” play-on-words and views the use of such a phonetically similar trademark and association with “Material Girl” as “contrary to the image of the brand.”
In the same vein, on March 1, 2017, Warner Bros. Entertainment Inc. filed an opposition with the Trademark Trial and Appeal Board against Southern Sky Brewing Co.’s newly filed trademark application for “Golden Ticket.” Warner Bros. argues that Southern Sky’s use of “Golden Ticket” on beer is a direct reference to its iconic 1970 feature film Willy Wonka and the Chocolate Factory as well as its 2006 re-make Charlie and the Chocolate Factory. It even goes as far as to claim that the Kennesaw, Ga., brewery’s use of such a well-known mark in connection with its milk chocolate stout promotes “underage consumption of its alcoholic products.” Warner Bros. takes particular offense to the fact that Southern Sky describes its beer as being “reminiscent of a chocolate hazelnut candy bar,” which it claims further calls to mind the golden tickets in Warner Bros.’ beloved movie.
While these may appear to be bold claims, it is important to note that MG Icon and Warner Bros. are arguably within their rights as trademark owners to protect their valuable brands. For MG Icon and Warner Bros., there is value in safeguarding the goodwill that they have developed and ensuring that consumers do not falsely associate certain products with their brands. Whether their actions will be criticized as over-reaching or applauded as diligent enforcement efforts remains to be seen.
RELATED: Craft beer trademarks, part III: Tips for filing the paperwork
One thing is for sure, this should serve as a warning to brewers — if your next IPA is inspired by a popular movie, song or pop icon, you may be opening yourself up to a potential dispute. The concern is no longer limited to stepping on the toes of a fellow brewer’s trademark rights (which can often be resolved by a quick phone call or friendly collaboration) but extends to more complex issues involving well-established brands. It is not uncommon for sophisticated trademark owners to use third-party services that monitor newly filed trademark applications for potential conflicts. One word from MG Icon, Warner Bros. or another affluent trademark owner could bring your production to a halt, require you to rebrand, scrap the labels, signage, cans, bottles and promotional materials bearing the mark in question, and cost a substantial amount of time and money should you choose to defend your position.
Brewers, by nature, will continue to push the boundaries between creativity and conflict, but need to do so with full knowledge and awareness of the inherent risk. In March of this year alone, federal trademark applications have already been filed by various breweries for “Beast of Burden” (reminiscent of the Rolling Stones’ 1978 hit song), “Barrel of Monkeys” (a direct reference to Hasbro’s iconic children’s game) and “The Dude” (a nod to the notorious character from the 1998 movie The Big Lebowski). As a general rule, when in doubt, steer clear of any references to third parties or their trademarks and consult with your attorney before releasing your next new beer.
Kelly Donahue is an attorney at Verrill Dana, a full-service law firm conducting a nationwide practice from offices across the Northeast. As a member of both the firm’s Breweries, Distilleries & Wineries and Intellectual Property & Technology Groups, Donahue has extensive experience in reviewing trademark availability searches; advising clients on the feasibility of adopting new trademarks; preparing and filing new trademark and copyright applications; and handling cases before the Trademark Trial and Appeal Board.
