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Recently White Claw’s owners (the alcohol brand) filed a lawsuit against Fun Club alleging that a candle Fun Club sells infringes on their trademark.
This lawsuit challenges any candle makers that use recycled beer cans, soda cans, or bottles as candle containers.
Is it legal?
Can you use recycled cans and bottles as containers for candles you sell?
If you’re hoping this article will give you a definite yes or no, unfortunately it isn’t clear. In this guide we’ll cover:
- Basic trademark laws you should care about
- When companies protect their trademarks
- White Claw vs Fun Club
- Recommendations for candle makers using upcycled containers
As always, this is not legal advice. Please consult with a trademark specialist if you think any of this applies to your situation.
Let’s dive in!
How do trademarks work?
Trademarks are good for business.
They can represent a lot of different things, and come with legal protection. According to CrashCourse, “the rationale for granting legal protection for trademarks is that they’re a type of property – it demonstrates to the purchasing public a standard of quality and embodies the good will and advertising investment of its owner”.
Just about anything can be trademarked:
- Logos
- Phrases
- Words and names
- Musical jingles (think of McDonald’s)
- Colors (Home Depot’s orange)
- Fragrance names (Yankee Candle has a fair number of trademarks in this space)
…but typically not flavors. It’s difficult to connect a flavor to a product’s source.
Trademark law exists to protect companies from unfair use of their intellectual property, but also to give consumers confidence that when they’re buying a product, it’s actually what they think it is. Without trademarks, anyone could place a logo on something and fool the customer into buying something that isn’t authentic.
Authenticity is more important than ever before!
Trademarks can be easy or hard to defend, depending how descriptive or specific they are. In fact, the United States Patent and Trademark Office defines a spectrum of trademark classes used in court to determine the enforce-ability of a particular protection.
That being said, candle makers should be aware of the following trademark rules.
Trademark Fair Use
It’s actually okay to use a trademark that you don’t own if you’re “describing” something using the mark (known as Descriptive Fair Use) or if you’re clearly “referencing” the mark without creating confusion over whether or not the owner sponsors or endorses your use (known as Nominative Fair Use).
For instance, you can market your rain forest tour company using the word Amazon, even though it’s trademarked because you’re describing your business.
Similarly, you can market your car repair shop as a place that repairs Ford vehicles, because there’s no confusion over the trademark in this case.
“Confusion” is the wild card here, and typically the source of the court case. It isn’t always clear what will and won’t cause confusion, which is why trademark cases get very interesting.
First Sale Doctrine
Under the First Sale Doctrine, you are allowed to resell items you purchased (legitimately) without permission from the trademark owner.
On the surface, this makes it seem like you could become a reseller at a massive scale, but that doesn’t necessarily hold true.
Even under the First Sale Doctrine, you can’t infringe on the owner’s trademark. Most of the time, this occurs when the product is modified in any way.
Famously, Nike sued MSCHF over the “Satan Shoes” which were modified Nike shoes – MSCHF’s protection behind the First Sale Doctrine will likely fall short since there was a material alteration to the original product.
Dilution
Trademark dilution happens when too many similar “marks” exist and threaten the overall standing of an existing trademark.
Apple fought to prevent a company named Prepear from establishing a brand simply because they perceived it as a threat to their trademarks.
The theory is that Apple has invested a tremendous amount of money into marketing and advertising that the very existence of similar marks would “dilute” their reputation on the market and potentially harm their business efforts or reputation.
For better or worse, this protection exists, but is only applicable for “famous“ trademarks – something a court would decide. Brands like Starbucks, Google, Amazon and Nike would almost certainly qualify as famous.
White Claw?
Uncertain.
It’s also worth noting that dilution can occur even if the two companies are not competitors and there is no likelihood of confusion – meaning it doesn’t matter if you’re in the shoe business or the home and garden business if you attempt to use the Nike swoosh in your product branding.
Protecting A Trademark
Andrea Anderson of Holland & Hart noted companies typically have three responses when they see use of their trademarks:
- Ignore it
- Fight it
- License it
Involving yourself in a lawsuit is expensive whether you’re on the receiving end or not. Unless there’s truly damaging harm to your brand on the line, you don’t have to pursue any action.
In the case of White Claw in 2019, they didn’t care about Trevor Wallace’s (in)famous parody video and ignored it (Option #1).
It certainly didn’t hurt that his viral video brought a lot of positive attention to the White Claw brand.
The good vibes continued for a bit until Trevor started selling shirts with the phrase, “Ain’t no laws when you drinking Claws!” (or something to that effect).
Feeling threatened, White Claw took to the courts to stop sales (Option #2).
Some analysts suggest White Claw should have partnered with Wallace to gain more control over their trademark while also boosting their brand because the shirts and phrase were wildly successful (Option #3).
Offering Wallace a licensed deal with trademarked goods would have been a win-win, especially since few would believe he was actually promoting anarchy via the hard seltzer.
Trademark actions are interesting. If a company never took any action to defend their trademark, the courts would question them if they ever did decide to defend it.
Why didn’t you defend it in the past?
The other end of the spectrum is having a zero tolerance policy, which becomes a huge mess of legal spaghetti and in the case of recycled products, raises eyebrows about their approach to sustainability and environmental friendliness.
As with lots of things in life, there’s a balance and a risk in action or inaction.
White Claw Sues Fun Club
Technically the lawsuit came from White Claw’s parent company, Mark Anthony International against Fun Club LLC and owner Caitlin Minges following a cease and desist order which Fun Club respected.
Fun Club sold candles made in upcycled White Claw cans, seemingly without any additional label or marking.
Mark Anthony sent a cease and desist followed by a lawsuit requesting all profits from sales associated with Fun Club’s White Claw candles.
As of this writing, it’s unknown what the outcome of the lawsuit will be, but it seems likely the ruling will be more beneficial for White Claw than Fun Club and here’s why:
Courts seek whether or not use of a trademark causes “consumer confusion”. Recycled can candles with no Fun Club-specific labeling may lead the consumer to believe White Claw endorses or sponsors the product.
In the event of a catastrophe involving the candle, White Claw contends it could irreversibly damage their goodwill and reputation in the market.
This just happened with Goop’s candle when it exploded in a customer’s care.
Only time and the courts will tell – trademark lawsuits are complicated, expensive, and require a lot of circumstantial interpretation.
Should you make containers from recycled cans and bottles?
Searching Etsy reveals over 1,000 results for candles poured in recycled containers.
There’s no shortage of this type in the candle niche. However their existence doesn’t necessarily dictate their legality.
The truth for must candle businesses, especially those on Etsy, is they operate as side hustles. You have to search long and hard to find millionaires or operations that employ more than three people full time in the candle making niche.
From the perspective of a candle maker, you should ask yourself if you’re doing anything that might cause consumer confusion or misleading anyone into thinking your candle is sponsored or endorsed by the brand on your label.
From the perspective of the trademark owner, they’re probably wondering if going after a company using their trademark is worth the trouble – either in how much they could potentially damage your mark or whether they’re even turning a high enough profit where it matters.
The pond is full of many small fish – White Claw must believe Fun Club is big enough where the damage and profit they make has significance in the marketplace.
Just like having candle insurance, upcycling wine bottles and cans without talking with the trademark owner leaves you at risk for a lawsuit. What you do about it is up to you, but it’s expensive to deal with and could wrap up your candle making operation indefinitely if you’re found at fault.
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