On Thursday, April 17, 2014, Ohio-based brewery Thirsty Dog Brewing Company filed a lawsuit against Sleepy Dog Saloon and Brewery, LLC from Arizona. The dispute isn’t about their two brewery names. Rather, it’s about their brews, and Thirsty Dog has reason to be upset. Since 1999, Thirsty Dog has held a registration in Class 032 its beer called OLD LEGHUMPER. Sometime since, Sleepy dog started selling its Leg Humper Hefeweizen, similar in name and in label artwork. The case is Thirsty Dog Brewing Company v. Sleepy Dog Saloon and Brewery, LLC, Docket Number 5:14-cv-00828.
The complaint alleges that Thirsty Dog sent a cease and desist back at least as early as July 1, 2011. We don’t know what kind of talks or negotiations happened between then and now, but this timeline does present a good opportunity to bring up a historic doctrine of trademark law: laches. Laches is an equitable defense to a claim of trademark infringement. A court can find laches applies when a plaintiff has unreasonably and inexcusably delayed bringing a case against a defendant, and that delay has prejudiced the defendant in some way. It’s a fact-sensitive inquiry, but it’s notable that back in 1939, in a classic post-prohibition brewery v. brewery trademark dispute, the 9th Circuit observed that “[t]he delay of nearly three years in bringing the suit has no explanation in the evidence and we find and hold it to constitute laches . . . .” Golden West Brewing Co. v. Milonas & Sons, 104 F.2d 880, 882 (9th Cir. 1939).
We make no predictions about this case, as two-and-a-half years is not a tremendously long time, and there could be good reasons for Thirsty Dog’s delay in bringing suit. Still, it’s a worthy opportunity to point out that when a brewery chooses to send a cease and desist, you really have to mean it. If you set a deadline to respond or otherwise threaten legal action, and then do nothing, you threaten your case against them. Certainly, some delays are excusable, and it’s up to the court whether to apply the doctrine, but it’s one more reminder that when you register a trademark, you have affirmative rights to police and protect that mark—else lose the strong rights you sought in purchasing the registration.