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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For some time now we’ve discussed in a series of posts the trademark fallout that has hit the craft brewing industry. With the explosion of this industry throughout the world, the once-congenial attitude breweries had towards intellectual property concerns has slipped away, replaced by both aggression when it comes to protecting IP and the threat of aggressive action from those outside the industry, given the amount of money being made in brewing. It’s been sad to see and it has frankly led to some of the silliest IP disputes I’ve ever seen.
As in any other industry, however, the truly frustrating stories when it comes to trademark disputes in the brewing business involve those outside the industry initiating conflict where it doesn’t belong. The most recent example of this is Boss Brewing having to change the name of a couple of its beers after being bullied by Hugo Boss, the upscale clothier.
As reported by Wales Online, Boss Brewing, which was founded in 2014, received a cease and desist letter from high-end fashion retailer Hugo Boss after applying to trademark its brand.
According to records published by the Intellectual Property Office, two Boss Brewing trademarks were taken out in October 2018 in a process which usually costs around £300. However, the brewer was instead required to pay almost £10,000 in legal fees during a four-month battle.
Co-owner of the business, Sarah John, told Wales Online that Hugo Boss was “adamant they wanted to stop the name” from being trademarked. The company told John that it owned the Boss trademark in most of the world, but that it did not own rights to it in relation to alcohol.
Again, trademark law is typically designed to keep the public from being confused as to the source of a good or service. The opposition and cease and desist notice from Hugo Boss apparently views the public as being unable to distinguish a maker of beer and a maker of clothing. Where perhaps I could see Hugo Boss having some issue with any apparel merchandise the brewer might have with the “Boss” name — and even that would be a stretch — taking issue with the name of the brewery or its beers seems remarkably silly.
But trademark bullying works, especially when the bully has much more money than its victim.
A compromise was eventually reached, whereby Boss Brewing was required to change the name of two of its beers. Boss Black, a 5% ABV stout, has become Boss Brewing Black, and Boss Boss, a 7.4% ABV double IPA, is now Boss Bossy.
The brewer is also forbidden from selling its branded clothing, which include hats and t-shirts.
John added: “We’ve got pallet loads of Boss Black which we are going to have to go through and change the labels of, which will be of great expense and time for a small brewery. This has been a horrible experience, and so stressful. We have worked so hard to create all of this and what should have been a simple process ended up making us question whether everything was going to be OK going forward in the future and whether we were going to lose everything.”
And for what? To ensure the public isn’t confused with the famous Hugo Boss line of clothing and a tiny Welsh brewery? It’s enough to make one need a drink.
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