Edit 10/23/2014 @ 6:20pm PST: Okay, so there’s an explorer guy named Tom Crean (who evidently also loved puppies)—and it looks like this business is very careful about its label-based branding, nodding to the Antarctic sea mission, which forms the entire basis of its branding model. Nevertheless, you can see—I was actually confused—and if I saw this beer on a beer menu, without the branding, especially at a sports bar, I’d think this had something to do with the man more well known in the pop culture spectrum. Interesting, interesting stuff. What do you guys think? Given the sonic—and not always visual—realities of the marketplace, I see consumers making a connection with the other Tom Crean, however I recognize from some digging that this brand has been around for a chunk of time with some now-abandoned similar marks. Have to love trademark law.
Sometimes, these blog posts just write themselves. Here I am, gearing up for my first Hoosier basketball season as a Seattle transplant, just last week exploring my Big Ten viewing options and crossing my fingers for a Hoosier bar tucked away somewhere here in the PNW. And, today, I’m reviewing the USPTO’s Trademark Official Gazette of published trademarks as I do each week when, hey, I see “TOM CREAN’S ALE” published. (If you don’t know who Tom Crean is, you’re not from Indiana and/or watching enough college basketball.) So, my curiosity was piqued. Could Crean himself be behind a delicious brew? Is the guy who saved the Hoosiers brewing? Hoosier ball AND beer? Mind blown. What’s going on here?!
I had to look into it, but after doing so, things are still messy. This doesn’t look to be a Crean-backed beer and, I predict, spells trouble for the applicant. Or, maybe it is a Crean-backed beer and they made a mistake. Here’s the deal.
You can’t file a TM that’s for the name of someone alive, unless you have their written consent. The applicant filed for this mark on April 27, 2014 without any such consent and, on September 1, 2014, USPTO issued an Office Action noting that (1) the applicant hadn’t disclaimed ale; and (2) that they either needed to tell USPTO this wasn’t identifying a living individual or they needed written consent. So, seeing how the mark published, I went on through looking for that consent, hopeful I could get my Crean-approved brew soon. But, it appears the applicant replied that the mark did not identify any living person.
Under Section 2(c) of the Lanham Act, refusal is proper where the mark “[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” This sort of issue has gotten marks like “PRINCE CHARLES” and “BARACK’S JOCKS DRESS TO THE LEFT” barred under 2(c). Now, bear in mind that registration of just any name on anything isn’t always going to be a problem, because USPTO gets that someone, somewhere probably has that name. The inquiry, though is whether the particular individual bearing the name in question will be associated with the mark as used on the goods, either because that person is so well known that the public would reasonably assume the connection or because the individual is publicly connected with the business in which the mark is used.
Sure, I was raised in the basketball heartland, but I’m voting that Tom Crean is so well known that the public is going to assume the connection. Even outside the basketball realm, which is huge, Crean is pretty well known as being John Harbaugh & Jim Harbaugh’s brother-in-law. This guy has Subway commercials! (Relevant fun fact: Subway’s own Jared dropped the lbs. while attending IU.) To the second potential prong—publicly connected with the business in which the mark is used—I will also note from experience that beer and basketball go quite well together, and are often consumed alongside one another.
So, what could happen? Tom Crean could oppose the word mark, alleging he’d be damaged by its registration. Outside of trademark law, there’s also a state-based right of publicity issue here. We’ve covered that before in the context of the OZZY beer dispute. Tom Crean has the right to exploit his name and likeness. I will also note that, should this ever bubble up in Indiana, the state has some of the most protective right of publicity laws, owing to some efforts by CMG Worldwide, a hardworking entertainment law firm based in Indianapolis, IN. (These are the folks keeping watch over, for example, the state’s own iconic James Dean.)
I’m still a little bummed there’s no Crean brew, but I am getting excited about the upcoming NCAA season, and hearing about the goodness that goes on as IU informally kicks off the season with Hoosier Hysteria on Saturday.
A brief interruption to our dormant commerce clause constitutional beer law nerd-out, to bring you some breaking brewery trademark news. Rogue may have settled one trademark lawsuit, but yesterday they entered another. The case is captioned OREGON BREWING COMPANY v. SCOUT LLC, dba GONE ROGUE PUB and it’s 1:14-cv-00439 for those looking on the docket.
We’ve reported before about Rogue’s litigation against Rogue’s Harbor Inn, which settled out on August 11, 2014 (see image for details there). Yesterday, on October 14, 2014, a little over two months since getting that dispute out of the way, Rogue’s back before the bench. This time, Rogue has filed a complaint in federal court against an Iowa bar that opened in 2012 under the name “Gone Rogue Pub.” Rogue has its concerns, given they have a registration in restaurant services, on beer, on beverage glassware, and on clothing.
In Rogue’s complaint (again, as always, under Oregon Brewing Company—speaking of, glad they picked a more defensible trademark for their branding), they allege that Gone Rogue pub has some of Rogue’s own branding up inside the bar, that the word Rogue appears on the pub’s branded glassware and coasters there, and to throw salt in the wound: the pub has specifically identified serving Rogue beer in press releases.
Cheers to Rogue, as their complaint states that Rogue reached out to Gone Rogue Pub early on in 2013 and tried to get some kind of coexistence rolling, so the pub wouldn’t have to completely change its name. That was a year and a half ago. Per the complaint, the owners directed Rogue to their attorney, and the attorney didn’t respond to Rogue. Then, a few months ago in August (the same month the Rogue legal squad finally took a breather after Rogue’s Harbor) talks/negotiations were not successful when Rogue again initiated them.
Given the press release and also the use of Oregon Rogue-branded stuff in the bar, the court might infer some bad faith here, which would not be good news for Gone Rogue Pub. Also, I would imagine Rogue’s olive branch is no longer leafy and green after being forced to draft and file this complaint, instead of being able to quietly hammer out an agreement.
Below are the counts in the complaint. We’ll see what sticks, unless Gone Rogue Pub comes to the bargaining table and it settles. Stay tuned to the Brewery Law Blog, as we’ll keep you updated on this one.
TRADEMARK COUNTERFEITING UNDER THE LANHAM ACT
(15 U.S.C. § 1114)
TRADEMARK INFRINGEMENT, UNFAIR COMPETITION AND FALSE
DESIGNATION OF ORIGIN UNDER THE LANHAM ACT
(15 U.S.C. § 1114)
TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND
FALSE DESIGNATION OF ORIGIN UNDER THE LANHAM ACT
(15 U.S.C. § 1125)
CYBER-SQUATTING UNDER THE LANHAM ACT (15 U.S.C. § 1125)
UNFAIR BUSINESS PRACTICES UNDER IDAHO LAW
(I.C. §§ 48-601 et seq.)
COMMON LAW TRADEMARK INFRINGEMENT
(I.C. §§ 48-500 et seq.)
Back to our regularly-scheduled programming. In our last content post, we promised an exploration of problems with protectionist legislation. In other words, laws that help in-staters while hurting out-of-staters, and why it’s no good for the brewing industry at large. Before getting there, though, today’s part of the discussion involves state concerns leading up to Prohibition, the problems that were still rampant during Prohibition, and how states dealt with it all after Prohibition (including implementing that three-tier distribution system we all know and don’t necessarily love). This is a general post, but you can find much more background in sections I–II here of Brewing Tension: The Constitutionality of Indiana’s Sunday Beer-Carryout Laws.
So, starting Pre-Pro. We didn’t have the Twenty-first Amendment yet (or, of course, that nasty Eighteenth, either). What we did have was the Commerce Clause. We know now that the Commerce Clause lets Congress regulate the instrumentalities and channels of interstate commerce as well as things that, in aggregate, are economic in nature and have an effect on interstate commerce. Well and good. Related to the commerce clause, however, is what’s been dubbed the “Dormant Commerce Clause.” That is, states can regulate things that Congress hasn’t but, in so doing, can’t discriminate against out-of-staters unless Congress says they can. This makes sense. It seems our Framers wanted us to live in the United States, and not a series of little countries that withheld their goods/services/resources or penalized other states for so doing. Anyway. The tricky part is that the Supreme Court has flipped back and forth in deciding whether alcohol is a “special” item exempt from Commerce Clause treatment. Could Washington, if it wanted, forbid out-of-state alcohol from being shipped in state while allowing full-blown production in state? Different answers, depending on the decade you ask the question.
So, go back to Pre-Pro. In 1847 in a series of cases known as The License Cases, the Supreme Court said, hey, alcohol is different and states were free from the restrictions of the Commerce Clause. But then in 1890, in Leisy v. Hardin, the Court struck down an Iowa law that confiscated alcohol shipped into Iowa if the alcohol lacked a proper permit. SCOTUS said that Congress was in charge of regulating interstate commerce, and if Congress hadn’t spoken, then states couldn’t. In response to this, Congress spoke, and passed the Wilson Act then eventually the Webb-Kenyon Act. The net effect of these acts was to basically give back to states the power to do whatever they wanted with respect to alcohol, whether discriminatory against out-of-staters or not.
Then, along came Prohibition. Everyone was “dry” on paper, but we all know about those zany flappers, the speakeasies, the booze that abounded underground. What States really didn’t like, though, was all the crime that went along with it. You had illegal distribution channels, and people like Al Capone vying for territory. No doubt about it, gangsters make for good movies, but States were not a fan. So, imagine the prospect of the Twenty-first Amendment from a State perspective. For years, alcohol was moving all over in ways that the State had zero control over. That booze was not being taxed. So, all of those underground trade networks out there stressed out states because, if they had to deal with grog, at least they could make some coin off of the whole situation. Apart from that, States were really worried about people drinking all the time. Like, all the time. Imagine seeing your people over-indulging with cheap whiskey, then heading off to the factory to operate heavy-duty machinery during the Industrial Revolution. Not a pretty combination, and one altogether too close in memory for State leadership now facing Post-Pro regulatory framework.
Another historic fun fact. You might have heard the term “Tied-house” thrown around. What’s that about? Well, back Pre-Prohibition the breweries figured out that rather than fight it out for tap share at every tavern in town, they could just open up their own tavern. They did, in droves, and some historians regale us with the consequences of all of that. You can imagine if a big out-of-town brewery opens up a tavern in a smaller town, then another big brewery does, then another, there’s not enough booze business to go around (or, if there is, the woman of the day were not fans). Consequently, some of those taverns turned to other forms of income, namely, entertainment of the illegal variety. States did not want to see this happen Post-Pro and they were also fearful that behemoth beverage producers would have so much cash, if they had tied-houses, they would be able to make all kinds of glitzy advertisements and everyone in town would be compelled to drink. Sort of a cute concern, when you think back.
At any rate, States were facing all of these competing concerns, with the realization that if they didn’t deal with it, they’d be back fighting all of the uglies they felt alcohol necessarily brought with it. The Twenty-first Amendment is on the horizon. What’d they do? States adopted the three-tier distribution system, and that’s what we’ll talk more about next time.
It’s official! I’ve joined Reiser Legal as a beer attorney licensed in Washington State. Having gotten to know Reiser Legal’s incredible set of passionate and ambitious brewery owners as a law clerk this past year, it means a lot to now officially partner in pursuing all of your unique visions.
I know that Doug Reiser’s tremendous industry knowledge, relentless work ethic, and straightforward legal approach are responsible for Reiser Legal’s growth. I know that because they’re the very reasons I’ve wanted to work alongside Doug ever since I got to know him years ago, when we started waxing poetic about what beer law—and a beer lawyer—can and should be. They’re the reasons I changed course, moved to Seattle, and am so excited and proud to make this announcement.
I should say, I am a huge fan of this industry, its people, and its culture, and maybe I have been before exactly knowing it. Back twenty years ago, it was my parents who started seeking out family-friendly brewpubs on our vacations, observing that local beer and breweries were a great way to get a feel for an area. To be sure, there weren’t nearly as many options in those days as there are today, but they’re still right about local culture speaking in its beer.
Like all of you, from my first batch of homebrew, I was hooked. As I’ve been traveling that long, winding, sudsy path, I’ve made some good ones and some great ones, and mostly a lot of friends in fellow homebrewers along the way. And I can say that on my end, as my garage became increasingly filled with beer gadgets and fresh grain bills, my head, too, was increasingly filled with all the ways breweries and the law intersected. While I spent my free time thinking, researching, and writing about it, I wound up doing work championing breweries with the Brewers of Indiana Guild, publishing an extensive piece about beer law reform in Indiana, and pouring beers on the side at an Indianapolis brewery in its first year of operation, all before packing my things and heading west to help push forward Reiser Legal’s mission. I see that mission as a simple one: be the most knowledgeable beer law shop out there, stay small and down to earth, never lose touch with the industry and what matters to it, and always make sure we’re doing things at reasonable rates that growing breweries can afford. My personal sub-mission at Reiser Legal will be to draw on my extensive intellectual property training, developing forward-thinking brand-protection tools and strategies, while managing our portfolio of trademarks.
I can’t wait to get to know all of you even better. It means a lot to be a part of your trusted team of counsel, and you can be sure that Doug and I will work hard together to best help build, protect, and defend your brewing business.
So, why’s a Seattle-based craft brewery law firm like Reiser Legal pontificating about Indiana beer laws? Actually, it’s because we represent Washington breweries that we care. And, no matter which brewers’ guild you belong to or which state of bountiful craft brews you call home, I’ll explain why this issue of federal constitutional law is worth your attention.
First, a little background. I’m an Indiana native. That means I grew up in a place where you couldn’t buy booze on a Sunday. Technically, you could buy it on a Sunday, but only if you (1) drove to a different state to get it or (2) were okay going to a bar or restaurant to enjoy some libations there. In other words, until 2010, you could not go into the market, buy brews, and bring them home on a Sunday.
What changed in 2010? In that magical year, the legislature made an exception for just about all craft breweries. (It’s no coincidence that in the years leading up to 2010, Indiana breweries were opening at unbelievably awesome rates.) The 2010 exception gave breweries a unique advantage. Suddenly, the only way to buy carryout beer on a Sunday was to stop by your local craft brewery.
As a consumer, the change in the law rocked. For starters, you no longer had to strategically plan your grocery shopping, planning ahead to stock up on swill before Sunday’s game. The change also affected the good folks of Ohio, as us Hoosiers no longer had to visit their glorious drive-through Sunday beer operations by force, but by choice. However, it wasn’t until, from a legal perspective, I started digging into federal constitutional issues affecting the brewing industry that I realized the problem with Indiana’s freshly-changed regulatory scheme.
Indiana’s scheme means that 100% of carryout beer sold on Sundays is made in the state. Put another way, out-of-state brewers have no access to Indiana’s booming Sunday carryout market. I thought about it, researched it, wrote about it, and put it all together into a Law Review Note called “Brewing Tension: The Constitutionality of Indiana’s Sunday Beer-Carryout Laws.” If you’re ambitious, you can read the note now. But, over the next couple of days, I’ll quickly (and painlessly) take you through why Indiana’s beer laws need deeper change, and why laws like these are bad for the entire industry—and might even affront our Constitution.
Stay with me this week as we talk a bit about beer history, including (1) things you might know, such as the bummer of a time that was Prohibition; or things you might not, such as (2) the crime that abounded during those “dry” years; and (3) the aims of the Twenty-first Amendment, as interpreted by the United States Supreme Court throughout the decades. Along the way, I’ll cover some need-to-know background about the common three-tier distribution system, including how far states can go in regulating booze shipped into and out of the state. We’ll touch on the landmark case of Granholm v. Heald, some decisions in the 7th Circuit interpreting it, and we’ll wind up on why Indiana’s law, as it stands, might not be constitutional. Through it all, I’ll pass along key takeaways for those seeking change in their own states.
See you next time.