'Beerman' not entitled to protection, court rules

Coors Brewing Co has succeeded in defending its use of the term 'beerman' in an advertising campaign, defeating the claim by local celebrity Robert Donchez to the exclusive right to the term. Focusing on the nature and strength of the term, the US Court of Appeals for the Tenth Circuit concluded that 'beerman' is not entitled to protection and, thus, Donchez was not entitled to the exclusive right to use it.

Donchez, a licensed beer vendor at the Colorado Rockies baseball team matches, adopted a certain persona that he called Bob the Beerman in an effort to entertain the crowd. In 1993 the State of Colorado granted Donchez a state registration for the service mark BOB THE BEERMAN for "education and entertainment services". Over the next few years, Donchez proceeded to make personal appearances, author a book and appear in a video, all promoting his adopted character Bob the Beerman.

In 1997 Coors launched a national television advertising campaign that featured, among other characters, certain vendors at sporting events referred to as 'Beerman' or 'The Beerman'. Donchez filed suit against Coors, claiming, among other things, that Coors's use of these characters and of the term 'Beerman' (i) violated his rights under both the Lanham Act and the Colorado Consumer Protection Act, and (ii) infringed his service mark under Colorado state law. After extensive discovery, Coors moved for summary judgment on each of Donchez's claims. The district court granted Coors's motion.

In affirming the district court's decision, the US Court of Appeals for the Tenth Circuit focused primarily on Donchez's claim that Coors's commercials constituted unfair competition under Section 43(a) of the Lanham Act. To succeed in his claim, Donchez had to demonstrate that (i) the term 'beerman' was protectable under the Lanham Act, and (ii) Coors's use was likely to cause confusion among consumers. Donchez argued that 'beerman' was suggestive and therefore protectable as it not only identified beer vending services, but also identified Donchez's general entertainment services. Donchez also contended that even if 'beerman' was descriptive, it had acquired secondary meaning when used in connection with his entertainment services.

To support his argument that 'beerman' is suggestive, Donchez relied on a single piece of evidence, which he failed to include in his appellate appendix and which the court therefore did not consider. The court also gave little weight to Donchez's evidence that the term 'beerman' had acquired secondary meaning, which included survey evidence and two declarations claiming that consumers associate the term with Donchez. The court concluded that Donchez failed to present sufficient evidence that the term 'beerman' has acquired any secondary meaning. Accordingly, the Tenth Circuit upheld the grant of summary judgment in relation to the common law trademark infringement claim.

Similarly, it affirmed the district court's grant of summary judgment in relation to the Colorado state service mark infringement claim as Coors did not actually use Donchez's registered service mark BOB THE BEERMAN.

Jessica L Rothstein, Goodwin Procter LLP, New York

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