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Don’t Pour Your Profits Down Your Competitor’s Drain




by:
Nicole J. Harrell
Kaufman & Canoles A Professional Corporation - Norfolk Office

 
August 5, 2014

If you owned a brewery you would never sell your beer without first tasting it, so why would you name your brewery or beer without checking to see if someone else is already using a similar name? The naming of breweries and beer is becoming big business - for trademark litigation lawyers. There have been a number of notable cases filed in 2014 alone:

Warner Bros. Entertainment v. Steinbeck Brewing Company, where Warner Brothers filed an opposition against Steinbeck’s application to register the word mark TASMANIAN DEVIL for ale. The Tasmanian Devil ale is brewed using hops from Tasmania and California. Warner Brothers filed an opposition with the Patent and Trademark Office claiming, among other things, that Steinbeck was attempting to boost its sales by misappropriating Warner Brother’s marks.

Atlas Brewing Company v. Atlas Beer Works, where Atlas Beer Works (“ABW”) filed an intent-to-use application on June 1, 2012, for the mark ATLAS and Atlas Brewing Company (“ABC”) later filed applications on October 24, 2013, for ATLAS BREWING COMPANY and ATLAS GOLDEN ALE, claiming a first use date of July 19, 2012. ABW and ABC are arguing over who has priority, or first use of the mark. In addition, ABC is opposing the ABW marks, alleging that ABW did not have bona fide intent to use the ATLAS mark when it filed its application, and that the ATLAS marks is geographically descriptive of the neighborhood where ABW will the located.

Anchor Brewing Company v. Steam City Brewery, where Steam City filed an application to register CITY STEAM and Anchor opposed the application alleging a likelihood of confusion and dilution of its registered mark for STEAM BEER and its common law rights in ANCHOR STEAM BEER. After the parties were unable to reach a settlement, Anchor filed suit in Connecticut Federal Court. City Steam has filed an answer along with a number of counterclaims , including a declaration that the terms “steam” and “beer” are generic and Anchor has no valid rights in these words on their own, as well as claiming that Anchor has violated the Connecticut Unfair Trade Practices Act by making bad faith trademark claims against City Steam since “steam” and “steam beer” are generic and falsely claiming to the public that the word “STEAM” or the phrase “ANCHOR STEAM” is a registered trademark. At one point Anchor used the trademark registration symbol ® next to the words “STEAM” or “STEAM BEER” even though it did not hold a valid registration for either.

Thirsty Dog Brewing Company v. Sleep Dog Saloon and Brewery, where Thirsty Dog filed a suit alleging that Sleepy Dog’s use of the mark LEG HUMPER infringes upon Thirsty Dog’s mark OLD LEGHUMPER.

Oregon Brewing Company v. Rogue’s Harbor Steak & Ale, where Oregon Brewing (known as Rogue Brewery) filed a suit against Rogue’s Harbor over its use of the term “Rogue.” Rogue Brewery owns a federal trademark registration for the mark ROGUE.

Elevation Beer Company v. Renegade Brewing Company, where Elevation claims that Renegade’s use of the name “Elevation” for its beer “Elevation Triple IPA” infringes upon Elevation’s mark ELEVATION. Renegade did not take Elevation’s demands lightly and filed an action to cancel Elevation’s mark on the grounds that Elevation fraudulent procured its registration by falsely claiming that no other party had a right to use the mark and falsely claiming that mark was used in commerce as of a certain date. Shortly after, Elevation filed a trademark infringement suit alleging that Renegade’s use has caused consumer confusion.

But a brewery’s concern may not just end with its beer colleagues and competitors. The Patent and Trademark Office has determined that beer, wine and spirits are related, even though they technically fall within different “classes” of goods. They have stated that a consumer can reasonably expect beer, wine or spirits to emanate from the same source, thereby causing the consumer to be confused about the source of the liquid goods. There is a contingent of cases pitting breweries against wineries, breweries against distilleries, and wineries against distilleries - GASPAR’S ALE for beer against JOSE GASPAR GOLD for tequila, RED BULL for tequila against RED BULL for malt liquor, JAS. GORDON for scotch whiskey against GORDON’S for gin and vodka, and CHRISTOPHER COLUMBUS for beer against CRISTOBAL COLON for wine.

The business of beer is booming and trademark disputes and suits will quickly consume a brewery’s profits. There is a good chance that a brewery can avoid costly litigation and possibly re-branding, by engaging a trademark lawyer to do some basic searching of the database of marks maintained by the Patent and Trademark Office. A trademark should be expansive enough to cover all types of alcoholic beverages since the Patent and Trademark Office has deemed them to be related. If similarities or concerning results are discovered, a third party search can be obtained that may give greater detail. A brewery can then make an informed decision about whether to proceed with the chosen name or go back to the drawing board and select a new name. A small, upfront investment in investigating name options and registering marks could help avoid very costly litigation and rebranding down the road.



 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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