Tag Archive for: Bully

Canadian Brewery Changes Name Of Brew Due To Peanut Butter Company Bully That Doesn’t Ship In Canada

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We’ve been talking about the trademark crisis facing the craft brewing industry for some time. To recap, an industry explosion coupled with the habit of that industry to come up with creative and referential names for its products has collided with trademark attacks coming both from within and outside of the industry. The industry, which once had a quite permissive and fraternal approach to intellectual property, has since become corporatized. New entrants to the market, therefore, face challenges with how to name their craft beers without facing legal threats.

This is where it’s worth repeating that trademark law is chiefly designed to keep the public from being confused as to the source of affiliations of a good or service. In other words, the brand name of a product shouldn’t fool the public into thinking it came from somewhere it did not. That reality makes it quite frustrating to see Off Track Brewing agree to change the name of one of its signature brews due to threats issued by a peanut butter brand.

When the guys behind Off Track Brewing came up with a stout beer, using real peanut butter as the key ingredient, they needed a name.

“We were brainstorming one day, and Jon just said, ‘You know what, Damn Skippy, it’s just jumping out to me, it’d be a really good name,'” said Allan MacKay of Off Track Brewing in Bedford, N.S.

You already know what happened. Damn Skippy jumped in popularity, leading some to comment on the brew on social media. There, whatever legal team the Skippy peanut butter people had contracted with took notice and fired off a cease and desist notice to Off Track. It never got to the litigation level, as Off Track agreed to change the name of the brew. Normally, this is where our post would point out that the beer-buying public is certainly not going to confuse a creatively named peanut butter stout beer as having anything to do with Skippy brands, not to mention that the two products are in wildly different market arenas. All of which ought to have been sufficient to push back on the C&D and even for Off Track to have its day in court, if it wished.

But even if you don’t agree with my assessment above, exactly how much potential confusion in the buying public could there be when that same Canadian public can’t even buy Skippy peanut butter?

Even though Skippy peanut butter was discontinued in Canada two years ago — months before the brewery opened — the owners decided to give in after consulting their lawyer.

“We’re gonna switch it up, so it’s not a big loss,” said MacKay. “The beer stays the same, which is good.”

Part of the requirement to hold a valid trademark is that it be in use in the marketplace for commercial purposes. The Skippy people appear to very much be not using it in Canadian commerce. How, therefore, could there be any potential for customer confusion? And why, for the love of all that is peanut-buttery, did Skippy undertake this bullying to begin with?

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University Of Illinois Attempts To Trademark Bully An Alumnus After Failing To Stop His Trademark Registration

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It’s not a great look when our institutions of higher learning either can’t get their own collective shit together on matters of law or else attempt to bully former students with specious claims. And, yet, this appears to happen far too frequently. The most glaring example of this was Iowa State University’s attempt to violate the free speech rights of its students that resulted in a $ 400k bill of blowback. Now it seems that the University of Illinois is seeking to trademark bully an alumnus after failing to take action during that alumnus’ trademark registration for a t-shirt in orange and black that reads “Make Illinois Great Again.”

It claims that an alumnus selling orange-and-black T-shirts with the phrase “Make Illinois Great Again” and a drawing of Chief Illiniwek (below) – the politically incorrect mascot itdumped 11 years ago – is trampling on the taxpayer-funded institution’s intellectual property.

The News-Gazette reports that the university claims the shirt’s colors are its “trade dress,” UI is often referred to as just “Illinois,” and that the shirt’s drawing of the chief infringes a 2007 photo of the chief. Therefore, defendant Ted O’Malley is “creating confusion in the marketplace” about who is behind the shirts.

You should recognize that this whole thing is absurd. The t-shirt makes no reference to the college beyond the image of The Chief, a dumb “mascot” that the school abandoned over a decade ago. U of I does use orange as a school color, but not black. Orange is also used as the color for many things. Oranges, for instance, turn out to often be orange in color. So do other universities, such as Syracuse. Regardless, while there is a nod to the Illinois school in the design of the t-shirt, it’s not one that makes confusing use of trade dress for the school, nor is it one that would cause confusion in the marketplace. In fact, the whole point of the shirt is to protest U of I’s shitty athletic program.

It’s quite hard to argue that anyone viewing that shirt, or the ad for it, is going to think it is coming from the school the shirt is criticizing. O’Malley’s lawyer obviously agrees.

“No one in their right mind would possibly believe that was something furnished by the University of Illinois,” said his attorney, Doug Johnson. “It’s much like someone making something that said ‘Make America Great Again’ being sued by America.

“They are a state actor, and they don’t like the message. They’re trying to stifle First Amendment rights.” …

“How many pictures of the Chief have been taken over the last 30, 40 years?” he said. “That’s like saying I took a picture of Wrigley Field, and you can’t draw a picture of Wrigley Field because I took a picture of it one time.”

The most face-palming aspect of all of this is that the school had every opportunity to raise these issues when O’Malley registered for a trademark on his slogan and shirt design. Upon his doing so, the school apparently challenged the registration… before falling asleep and forgetting that it had to do more than that.

The university sought to stop approval of the trademark in November but couldn’t be bothered to respond to a motion to dismiss by O’Malley’s lawyer Johnson.

In that motion with the U.S. Patent and Trademark Office, Johnson said the sought trademark was a “political statement” against the state government for its “unpaid bills of over 15 billion dollars” and record of tax hikes, as well as an athletic statement against the poor performance of the university’s football and basketball teams.

Johnson pointed to the nearly 900 registered trademarks with the word “ILLINOIS” in them and said his client’s design didn’t use italics, as does the university’s official design.

And that was it. The school never responded. In other words, the trademark concerns it claims to hold so much so as to cause it to sue a former student were apparently not so important to warrant a simple legal response to a proceeding the school itself had initiated.

It might be time to make the University of Illinois’ legal team great again. Or, if not great, perhaps responsive?

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