State of Texas Moves to Intervene in Alamo Brewery Trademark Dispute

Not too long ago, we reported on a new brewery v. brewery trademark dispute, Alamo Beer Company LLC v. Old 300 Brewing, LLC. The lawsuit just got more complicated. On Monday, the State of Texas moved to intervene in the dispute, contending they may have superior rights to the trademark and trade dress at issue in the dispute.

A quick recap on the lawsuit. Alamo Beer Company is suing Texian Brewing Company because Texian used a silhouetted roofline of the Alamo. Alamo Beer Company has a trademark for its name, and though it has not registered its logo, alleges that it has been using a silhouetted roofline of the Alamo since 1997 in conjunction with its beers. You can read more about that dispute in our reporting here.

800px-Alamo_panoNow, for the state of Texas. The big kahuna has entered the dispute, making this whole thing more complicated and more costly for the breweries. In its Motion to Intervene and accompanying proposed complaint, Texas alleges that it owns the historic Alamo Mission and has registered and unregistered common law rights to, among other things, use of the historic roofline in commerce. Texas may well have been using a silhouetted roofline of the Alamo in commerce well before Alamo Beer Company started using it, but the key question is whether consumers are likely to be confused by the two uses. We’re guessing that in the 17 years Alamo Beer Company has been operating, consumers haven’t thought that the beer came from or was endorsed by the State. We could be wrong, and maybe there’s some evidence of actual confusion—but why wouldn’t Texas do anything sooner? We’ll see what the court does with that, unless the parties settle.

Notably, too, an Exhibit attached to Texas’s motion indicates that Texas does not hold any federal trademark registration including the silhouette that predates Alamo Beer Company’s use. The State of Texas does hold a registration for the silhouetted logo for DVDs, CDs, mouse pads, and magnets, but only sought registration in 2013 (Reg No. 85854879). Texas has recently (last week) tried to jump in and register the silhouetted logo in Class 032 for bottled water (Serial No. 86259263), the same class of trademarks that beer is in. However, trademark classes are just an administrative tool for the USPTO. What matters is whether the goods are proximate enough to cause consumer confusion. We don’t think something like bottled water or these other Texas uses pose that kind of problem here. And, we’ll note that as to any bottled water / beer confusion, an agent for the State of Texas affirmed that they didn’t think confusion was likely either when they applied for the non-concurrent-use trademark eight days ago, undoubtedly when they already knew of the dispute and Alamo’s senior common law rights to the silhouetted logo. We’ll also note that there’s already a federal trademark registration for “Alamo Water,” since 1991 (Reg. No. 1695581) but that’s a wholesale distributor of water conditioning products and not a consumer-facing bottled-water retailer. Likely not a problem for Texas’s own trademark registration, but more on that in a second.

The bottom line is, Texas does not allege that it is any way in the business of beer, brewing, bars, alcohol, etc. Texas’s alternative angle, which they do allege in the proposed complaint, is that the Alamo mark it uses in conjunction with commerce is famous, and that use of the mark by anyone else would be dilutive. Texas makes this allegation, under both State and Federal law. We’ll leave Texas law analysis to a Texas beer lawyer, but from a federal perspective, to succeed on a theory of trademark dilution by blurring or by tarnishment, Texas would have to prove that its mark, commercially, became famous before folks like Alamo Beer Company started using something similar. As to dilution by blurring, one of the factors the court will have to consider in deciding whether blurring is at play here is “the extent to which the owner of the famous mark is engaged in substantially exclusive use of the mark.” See 15 U.S.C. § 1125(c)(d)(b). Given existing registrations for things like Alamo Water and Alamo Beer Company, not to mention widespread use by the arguably pretty famous Alamo rental car company, this seems like a fatal blow to Texas’s dilution case. We also have reservations about whether The Alamo is really famous, in a commercial sense, to warrant that kind of broad protection. See 15 U.S.C. § 1125(c)(2)(A). And, as to dilution by tarnishment, if someone like Louis Vuiton couldn’t prove that Chewy Vuiton dog treats tarnished its brand, we have doubts about whether a trier of fact could reasonably find that Texas’s Alamo brand, if it even is famous, has been actually or likely tarnished by what is probably pretty dang good beer.

An interesting turn of events in this case, to be sure, and we’ll be keeping you posted on any developments. As always, we’d love to hear your thoughts on this dispute, so feel free to find us in the comments or on Twitter.

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