On Friday, a new brewery v. brewery lawsuit was filed in the Western District of Texas. This dispute raises interesting issues, and also highlights again the importance of early clearance and registration of your desired brewery name and related materials, including your logo and even the look of your tap handles.
The dispute is between Alamo Beer Company and Texian Brewing Co., docket no. 5:14-cv-00285. Here’s a link to the complaint.
Alamo has been selling beer under the Alamo brand since late 1997. Since then, Alamo has used a silhouette of the Alamo as a part of its logo. Other Alamo-esque and very Texas imagery (stars, cannons) and phrasing (“Remember”) also help form the look and feel of the Alamo logo and trade dress. Alamo never registered its logo, but does have a registration for the word mark ALAMO (Reg. No. 74607465).
Sometime in 2011 or 2012, Texian Brewing began using a logo that features a silhouette of the Alamo. Likewise, the tops of Texian Brewing’s tap handles are carved into the silhouette of the Alamo, and they also feature a cannon, star, and other Texas imagery.
The complaint observes that on May 22, 2013, Alamo Beer Co. contacted Texian about the matter. Evidently, Texian didn’t reply to this first email and the next day, on May 23, 2013, went ahead and filed a trademark application for TEXIAN BREWING CO. along with a design mark for their logo, which again featured the silhouette of the Alamo. Note that in the application’s description of the mark, the brewer made no reference to the Alamo and generically referred to the silhouette as “a black and white design of a stylized roof outline.” This mark registered on January 21, 2014 (Reg. No. 85940608).
It’s unclear whether Alamo was aware of Texian’s trademark filing because Alamo never opposed Texian’s mark when it was published, though Alamo and Texian had been in contact during that time. Perhaps waiting until now was a strategic maneuver. We can’t know. But, the lawsuit does raise interesting issues.
Because Alamo has registered its ALAMO word mark, confusion about the silhouette could stem from that. Consider, for example, if a brewery were called Blue Octagon Brewing Company and another brewery started using blue octagons in its logo and on tap handles. Of course, this silhouette is not as tidy as that example, but for consumers in Texas—currently both breweries’ primary trading territories—that distinctly Alamo silhouette could have that same kind of significance.
We believe Alamo would have a much stronger case, and maybe could have avoided litigation in the first place, if it had registered its logo with the silhouette back when the brewery first started using it. Still, Texian’s registration is not a slam dunk for Texian. If the court finds consumer confusion likely between the two due to the logo, because Alamo is an unregistered senior user (unregistered at least with respect to the silhouette), Alamo technically would have superior rights in its existing trading territory—which sounds like most of Texas. Indeed, in its complaint, Alamo seeks to cancel Texian’s registration, and they have grounds, because technically Texian should have carved out Alamo’s existing trading territory when applying for its trademark. Of course, had Texian properly done so, Texian would have obtained a federal registration to use its Texas-themed logo…just not in most of Texas.
This is messy stuff, made messier because unfortunately the two breweries could not privately resolve this matter. And, though we can’t know for sure, it seems that early trademark clearance and early trademark registration could have prevented this costly dispute. As always, we will be following this lawsuit and will let you know how it progresses.