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 had on a webpage (no longer available) 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?