Bought some Clown Shoes Vampire Slayer before the new Undead Party Crasher label comes out.
December 3, 2013
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Beer and trademark infringement. What’s more exciting than that? It’s the perfect example of why I chose to practice intellectual property law. While my colleagues are valiantly embroiled in contentious family law disputes, real property nightmares, and trying to keep their clients out of jail, I get to look at “pictures and stuff,” namely, branding.
As you’ll read in the Techdirt post, TI Beverage Group and Vampire Brands sued a small brewery named Clown Shoes over Clown Shoes’ use of “Vampire Slayer” as the name of a Clown Shoes stout.
Vampire Brands has a trademark registration for “VAMPIRE” for use with “ale” and “beer.” It looks like Vampire Brands uses the “VAMPIRE” mark as a primary source-identifier, so it’s “Vampire (brand) Pale Ale,” whereas the Clown Shoes product is a Clown Shoes (brand) stout, named Vampire Slayer.
Here’s an image of the bottles that Clown Shoes has on a webpage explaining the lawsuit:
I don’t necessarily agree with Clown Shoes’ position that because Clown Shoes beer would be in one section of the beer aisle/store, and Vampire’s beer would be found in another aisle or section, then there would be no consumer confusion. Trademark cases have shown that different types of alcoholic beverages, such as beer and wine, can be related goods for purposes of trademark infringement, so a stout vs. lager argument might not be too convincing (although sophistication of the purchaser may factor in). Nonetheless, this case does seem to be a bit of a bully case given some of the facts that Clown Shoes presented. Protecting one’s brand is critical; however, I think it is highly unlikely that consumers would be confused as to the source of the two beverages pictured above. Looking at the VAMPIRE registration in a vacuum, maybe. But that’s not how trademark infringement cases are sorted out. It’s all about whether or not the consumer – as the consumer encounters the marketplace – would be confused as to the source or origin of the goods.
The webpage that Clown Shoes put together does a nice job of explaining the realities of this type of litigation. Even if Clown Shoes had a slam dunk defense and could beat the case, it will cost hundreds of thousands of dollars to do so. As Clown Shoes puts it: “that sounds like stabbing ourselves in the face to cure foot pain.” But predicting who would win this case is not the purpose of this blog post. It’s what Clown Shoes did to avoid the lawsuit and continue on making beer in the least-disruptive way possible.
Rather than fight it, Clown Shoes made a brilliant move. They settled with Vampire Brands in such a way as to obtain a license to use the VAMPIRE name on the Clown Shoes product. The brilliant part is that Clown Shoes still plans to discontinue the name: “A settlement, the terms of which I am not at liberty to disclose, was reached with Michael Machat, Vampire Brands, and TI Beverage that licenses Clown Shoes to use the name Vampire Slayer. I can say that based on all factors, the Vampire Slayer name will soon be discontinued, despite the licensing agreement.”
So, they avoided the cost of litigation, licensed the mark for, hopefully, peanuts (Beer Nuts®?), and then humiliated the aggressor by saying “no thanks.” (That move reminded me of this classic case.)
Rather than continue with the now-tainted Vampire imagery, Clown Shoes plans to rename the Vampire Slayer beer to “Undead Party Crasher.” Bravo.
And, as soon as the name change is complete, you can guarantee that I’ll be in line at Total Wine to grab a few bottles. How often do trademark attorneys make an appearance on product labeling, even if we’re being called monsters?
December 3, 2013
It has been a very, very busy year both personally and professionally. Personally, I lost a very, very close family member to cancer, yet, in the process, I forged some amazing relationships that will last a lifetime. On the work-front, I have returned to the boutique IP firm that first hired me as a law clerk during law school. It was a tough decision to leave Walters Law Group after 4 great years, but in the end, I know that it was the right decision.
Specifically, I have rejoined the firm of Beusse Wolter Sanks Mora & Maire, P.A in downtown Orlando. My practice includes intellectual property litigation and dispute resolution (including patent litigation), trademark and copyright prosecution, and related services such as licensing and transactional matters. Based on my previous practice, I also have extensive experience working with Internet-related technologies and clientele, including mobile app developers, webmasters, and other content providers, and I will continue to practice in this area as well.
Feel free to contact me if you think I might be of assistance.
Here’s to an exciting and productive 2014!
October 22, 2013
This raises some interesting intellectual property issues. When I read the headline, I was hoping that it wasn’t Spongebob’s creator/licensor/owner that caused the cemetery to go back on their prior approval. Instead, it was the cemetery itself that had a change of heart.
Technically, this gravestone could infringe both copyright and trademark rights. But, as the brand/copyright owner, this one would probably be best left alone. I can’t imagine that a black market of cartoon character grave markers will spring up if this “infringement” is left unchecked…
October 9, 2013
The real irony here is that “duffin” is a weak trademark based on descriptiveness, and somebody other than the parties listed in the above article has already received a U.S. registration (on the Supplemental Register) for “DUFFIN.“ (Even more ironic is that the DUFFIN registration is on the Supplemental Register not because the Examining Attorney picked up on the “doughnut + muffin = duffin” descriptiveness, but because “Duffin” is apparently a rare surname, thus it went on the Supplemental Register.)
June 13, 2013
Just as unexpected as it was last year:
Kevin W. Wimberly has been named to the Florida Rising Stars list as one of the top up-and-coming attorneys in Florida for 2013. Each year, no more than 2.5 percent of the lawyers in the state receive this honor. The selection for this respected list is made by the research team at Super Lawyers.
Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a rigorous multi-phased process that includes a statewide survey of lawyers, and independent research evaluation of candidates, and peer reviews by practice area.
The Rising Stars lists are published nationwide in Super Lawyers magazine and in leading city and regional magazines across the country.
April 24, 2013
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If the BCS’s application for “College Football Playoff” is approved by the USPTO for registration on the Principal Register, I’ll eat the last Office Action I received.
This isn’t even merely descriptive. It’s generic.