Ultimate sports fans can crack open a cold one to celebrate a recent Louisiana ruling clearing Anheuser-Busch’s Ultimate Fan sweepstakes from trademark infringement claims. The major brewing company (and famed sponsor of the stop-motion animated Bud Bowl) prevailed in a suit over the use of the phrase “Ultimate Fan” in its sports- related marketing, a decision that effectively benched plaintiff Action Ink’s THE ULTIMATE FAN trademark.
Action Ink, a sports marketing firm, first registered its trademark for THE ULTIMATE FAN in 1985 as a signifier for its concept for “promoting the goods and/or services of others by conducting a contest at sporting events.” Since the mark’s inception, Action Ink has both teamed up with and sparred with major sports franchises, corporations and universities in its mission to hold promotional contests at sporting events. However, its results have been mixed: some entities halted or made changes to “Ultimate Fan” promotions upon receiving a cease and desist letter from Action Ink, while others contested Action Ink’s claims. In fact, Action Ink and Anheuser-Busch first exchanged polite correspondence in 1988 over the brewer’s use of the mark in a baseball promotion.
Several years ago, Action Ink turned its attention to football promotions, eventually filing suit against one team’s use of the “Ultimate Fan” mark in online fan pages. Subsequently, Action Ink sued Anheuser-Busch.
In its complaint, Action Ink outlined Anheuser-Busch’s “pervasive use” of THE ULTIMATE FAN mark in a slew of advertisements and commercials over the past three years, including a national “Ultimate Fan Experience” sweepstakes, with one prize being tickets to Super Bowl XLVI. Given defendant’s use of a phrase identical to plaintiff’s trademark and in association with a concept similar to defendant’s (promotional contest in tandem with sporting events), Action Ink claimed Anheuser-Busch’s sweepstakes were nothing short of unsportsmanlike conduct under the Lanham Act.
In July, a Louisiana district court granted defendant Anheuser-Busch’s summary judgment motion and cancelled plaintiff’s mark, citing two independent grounds: (1) abandonment of the mark, and (2) failure to demonstrate a likelihood of confusion between plaintiff’s THE ULTIMATE FAN mark and defendant’s Ultimate Fan Sweepstakes. (Action Ink, Inc. v. Anheuser-Busch, Inc., 2013 WL 3776548 (E.D. La. July 17, 2013)).
In cancelling plaintiff’s mark, the court stated that it was bound by a prior decision involving Action Ink and a sports franchise, in which that judge booted Action Ink’s claims, holding Action Ink had abandoned its mark due to lack of use since 1995.
In the alternative, the court dismissed the trademark infringement claims because Action Ink failed to show any likelihood of consumer confusion between its mark and defendant's promotions. In finding the plaintiff’s mark “quite weak,” the court pointed out that many companies and multiple sports franchises have run “Ultimate Fan” promotions, and that – ultimately – there was “no possibility that consumers have been unable to discern whether a contest called “The Ultimate Fan” originates from plaintiff or another company because plaintiff has no public presence related to the Mark.”
Action Ink contested the call but, faster than you can say instant replay, the court denied plaintiff’s motion for reconsideration in a succinct order issued October 17. Action Ink isn’t quite ready to be buds with Anheuser-Busch, however. Deeming the ruling “incorrect,” Action Ink threw a Hail Mary and appealed the decision to the Fifth Circuit on October 22.