Non-cartoon people trying to register DUFF as a trademark for beer probably drank too many beers or had too few trademark lawyers helping them out. For example, an applicant named Marcus Duff from filed a U.S. trademark application for DUFF BEER for beer in 2007. The Patent and Trademark Office (PTO) refused this application, noting it would likely cause confusion with several, already registered trademarks for DUFF’S covering bar services and food owned by WNY Restaurant Systems, Inc. The PTO reasoned that confusion is likely because applicant’s beer is related to registrant’s bar services and that beer is served in bars. Marcus Duff was done at the PTO.

Without searching PTO records to see that the PTO had given Mr. Duff a hefty bum’s rush just a year before, another applicant swaggered up to the PTO in March 2008 and plopped down their money to try to register DUFF for beer and ale. Cerveceria Mexicana S. de R.L. de C.V. filed an trademark application alleging that they were already using the mark for beer and ale. When filing an application based on use, a trademark applicant is required to submit a specimen showing the mark used with the goods. In the case of beer or wine, that means a label or a photo of a bottle with a label on it. Ignoring this requirement, Cerveceria Mexicana submitted as its specimen a plain white sheet with the word DUFF on it. The PTO not only pointed out the insufficiency of this specimen of use, but refused the application on the same basis as it had refused Marcus Duff’s application: the prior registered DUFF’S marks.

So where is 20th Century Fox, the owner of the Simpson’s intellectual property, in all of this? On the stool next to Barney Gumble at Moe’s Bar, happily watching the PTO protect their DUFF mark? Probably, although we have to give Fox more credit. Fox tried to register DUFF BEER in a stylized form (like it appears on labels in the show) for several non-beer products in 1999 (shirts, hats, etc). Oddly, when it came time to prove these marks were in use on the dedicated goods, Fox could not do so and abandoned its trademark applications. The problem was probably that the marks, although open and notoriously used on the longest running television comedy show, were not actually used on these goods in the real world.

A few years later, Fox began using DUFF on several non-cartoon items and reapplied for trademark registration, obtaining one registration for DUFF and soon to obtain a few others for DUFF BEER. True to Groening’s wishes, these trademarks do not cover beer, but cover items like shirts, swimwear, bathing suits, pants, hats and soft drinks. Although Groening and Fox have been loathe to water down the Simpsons with massive licensing during the first 20 years of the show, that seems to have changed in the last few years. Fox appears to have licensed a considerable volume of Simpson’s intellectual property to establish a Simpson’s Ride at Universal Studios. After the ride, you can tour a full scale version of Apu’s Kwik-E-Mart and buy all kinds of Simpson’s gear, including the DUFF energy drink, sold in a can that looks just like a DUFF Beer from the show. The perfectly recreated DUFF can prominently states that the drink is produced by Boston America Corp under license from Fox.

Two lessons: 1) even cartoon trademarks can be protected; and 2) get a trademark lawyer (not the cartoon Lionel Hutz) to help you out.

Thank you and come again!

Paul Jorgensen
The Jorgensen Law Firm PLLC
http://www.jorgensenfirm.com