Red Bull Energy Drink Sues New York Distributer For “Gray Market” Imports

Likelihood of Confusion?

Red Bull North America has sued Central Supply, Inc. in the U.S. District Court for the Eastern District of New York for trademark infringement, unfair competition and copyright infringement for Central Supply allegedly importing and selling “gray market” versions of the popular energy drink.  Red Bull claims that the “gray market” energy drinks are intended solely for distribution at overseas locals and could have different nutritional information, unfamiliar ingredients and lack of federally mandated nutritional disclosures.

Probably more important to Red Bull’s bottom line is that these “gray market” imports circumvent authorized distribution networks.  In addition, Red Bull alleges that these gray market cans bearing Red Bull’s trademarks and copyrighted subject matter have a different overall image than the North American versions of the can and that this different look is “likely to cause consumer confusion, mistake and/or deception to the detriment of Red Bull.”

Filing an Intent to Use Trademark Application with the USPTO

Recently a client of mine asked if he could register a trademark for a future product line that is not yet in existence but that he plans to launch.  He went on to say that he has a particular name and idea for a product line that he intends to launch one day and he wants to make sure that he secures the rights to the name before someone else takes it.

All too often clients seek to have a trademark filed with the USPTO even though they have yet to meet the requirements needed to legally file a trademark application.  More often than not, the applicant has not established a use in commerce for its trademark quite yet and simply hopes to file an Intent to Use trademark application in order to buy time.  Usually the applicant will use the six months until a Statement of Use must be filed to begin producing the goods or offering the services.   With priority being so important it is easy to see why clients are aggressive in their filings.

Decisions by the Trademark Trial and Appeal Board (TTAB) reaffirm that an Intent to Use Trademark, under section 1(b) of the Trademark Act, is not simply a means to buy time for the applicant to meet the requirements of a section 1(a) Use in Commerce trademark.  Even if the mark eventually achieves registration, it is subject to opposition and cancellation in light of the decision in L.C. Licensing, Inc. v. Cary Berman, Opposition No. 91162330 (TTAB March 28, 2008).

An applicant filing a section 1(b) Intent to Use trademark must possess a bona fide intent to use the mark.  Something more than a good faith intention to eventually use the mark is needed.  As the Board held in L.C. Licensing, , more is required; namely documentary evidence of your intent to use the trademark.  Such documentary evidence could include samples of brochures, fliers, signs, or other materials evidencing how the mark is going to be used; snapshot of websites, ; business plans; or other objective evidence showing how the mark will be used In commerce.  If you have purchased your domain name and have a website ready to go live and everything else is prepared and you have simply yet to use the mark in commerce or “go live”, than you would likely meet the requirements to file and Intent to Use Trademark as set forth in L.C. Licensing.

However, if you woke up today, as my client did, and thought of a future product line that does not exist, you will likely need to do some work before it is time to file an Intent to Use trademark.

New Bud Light “Fan Cans” Are Causing A Stir around College Campuses

Are Fan Cans a Trademark Infringement?

Some colleges around the country are not cheering for Bud Light’s latest, some may call it brilliant, marketing campaign.

Using some 27  combinations, the cans carry the colors of various football teams throughout the nation. The Bud Light marketing campaign urges football fans to “show your true colors ” on game day.

Neither the name of the team nor its logo is displayed and the teams have no connection to the Bud Light campaign.

Nonetheless some colleges are complaining.

The Wall Street Journal reports that 25 colleges have formally asked Anheuser-Busch, brewer of Bud Light, to drop the campaign near their campuses, The University of Michigan  demanded that Anheuser-Busch not sell the “maize and blue cans in the  state,” the Journal reported. The University of Colorado, Oklahoma State University, Texas A&M University and Boston College have also told the company to stop distribution near their campuses, citing trademark issues and concern about student alcohol use, the newspaper said.

But is this a trademark or trade dress issue?  Neither the team name nor its logo are on the cans, merely colors.  So Bud Light could produce Navy Blue and Gold/Yellow cans and they could sell them around Navy, Notre Dame, West Virginia and Michigan just to name a few.  That fact alone weakens any claim that a color combination on a can is infringing the trademark or trade dress of a particular school.

I think the trademark infringement threat was dead on arrival.  Bottom line is Bud Light has brilliant marketers that  have appealed to the rabid fans’ obsession with anything containing their school’s colors.

Go Navy!