New Brewery v. Restaurant-turned-Brewery Trademark Dispute: Rogue (Oregon Brewing Company) v. Rogue’s Harbor Steak & Ale, Docket No. 5:14-CV-0428

Oregon’s widely distributed brewery known as Rogue has filed a lawsuit against a New York company called Rogue’s Harbor Steak & Ale, Docket No. 5:14-CV-0428. The case is technically captioned Oregon Brewing Company v. Rogue’s Harbor Steak & Ale, and you can find the complaint here. The case is not as tidy as it might seem upon first glance, and Rogue’s Harbor Steak & Ale has yet to file an answer, but a little digging on our part shows the makings of a bona fide turf war.

The timeline of events is, as it always is in trademark disputes, really important. We’ll do our best to take you through it here.

The complaint alleges that Rogue has held a federal trademark since the end of 2002. That trademark gives Rogue nationwide rights to use the name in conjunction with beer, but Rogue took those rights subject to the rights of existing unregistered common law users. More on that soon. Before 2002, though, Rogue had still been using the name on beers for quite a time, since 1989.

Turning to Rogue’s Harbor Steak & Ale (doing business as Rogue’s Harbor Inn), they do have some historic use of the name in conjunction with an inn since the early 1900s. You can read a bit about that here. It’s unclear whether that historic use has been continuous, but in our view, it really doesn’t matter. What’s critically important is that Rogue’s Harbor Inn began running a restaurant on the first floor of the inn since 1996. Again, 1996 is after Rogue had taken up use but before Rogue filed a federal trademark.

Although Rogue’s Harbor Inn wasn’t yet brewing (the company started brewing under the “Rogue’s Harbor Brewing” name in 2011), restaurants are arguably related to the alcoholic beverage industry and, it follows, that breweries or “brewpubs” could arguably be within a restaurant’s natural zone of expansion. Note that in a related close case, not binding on the Northern District of New York, the Federal Circuit has past decided that beer and restaurants are not related. See, e.g., In Re Coors Brewing Company, 343 F.3d 1340 (2003) (reversing the TTAB’s decision and finding that although an application for “Blue Moon” for beer was similar to an existing “Blue Moon” registration for restaurants, beer and restaurants were dissimilar enough under these circumstances to warrant simultaneous registration); but see In re Constellation Wines U.S., Serial No. 78803750 (April 17, 2008) [not precedential] (TTAB concludes that applicant’s Brickstone Cellars mark for wine would be confusingly similar to the registered Brickstones mark for restaurant services, finding restaurants and wine related).

If the court views restaurants and breweries as related and, in turn or otherwise, finds that brewing was in the restaurant’s natural zone of expansion (typically, a reasonable likelihood of expansion to include those goods/services), then Rogue’s Harbor Inn would appear to have earned its common law rights to keep on using the name for its brewery irrespective of Rogue’s federal trademark. That is, again, Rogue’s federal trademark only gave the brewery nationwide rights to places where existing common law users, likely to cause confusion, had not yet taken up use on the date of filing. We know Rogue’s Harbor Inn had started that restaurant before Rogue ever filed the trademark. Of course, Rogue’s Harbor Inn’s right—if attached to the restaurant’s zone of expansion—would only extend to wherever Rogue’s Harbor Inn had established secondary meaning on the date of Rogue’s filing, so maybe just Ithaca, NY and the closely surrounding area. Whew. Messy stuff.

We’d love to see what this court does with the restaurant/brewery zone of expansion question, and should make clear that Rogue is in no way alleging that the restaurant should discontinue its use of the name in conjunction with the restaurant—just the use of the name in conjunction with the 2011-established brewery. At any rate, for the parties’ sake, we hope they can find a way to settle this one. It’d be an expensive fight to the finish line.

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