Edit 1/14/2015 at 2:06pm PST: Indeed, Lagunitas dismissed the lawsuit. Thanks to Twitter for breaking the news and the screen cap. As this fellow beer attorney points out and helpfully includes the filing, it’s dismissed in a way that Lagunitas could sue again, but I think we know what kind of uproar that would cause. That said, if anything was ever going to associate those two marks in consumer’s minds, certainly now this lawsuit will!
See our coverage yesterday on the Lagunitas – Sierra Nevada lawsuit, directing you to the public’s overwhelming reaction in favor of Sierra Nevada. Lagunitas owner Tony Magee, via the tweets below, called yesterday the “worst day ever” in the brewery’s history and vowed to drop the lawsuit this morning. We’ll report back if that’s the case. Some Twitter followers are asking Tony Magee to apologize. Indeed, this particular dispute-that-was may well beat out the Magic Hat / West Sixth catastrophe. Turns out the increasingly trademark-savvy public is quick to defend even the big guys, too.
Today, January 13th 2015, has been the worst day ever in 23 years of growing my brewery. Worst. Growing a biz involves defending a biz… — LagunitasT (@lagunitasT) January 14, 2015
Defending a biz requires answers to Hard Questions. Q’s like: Are our Foundations Strong? Are our Flavors right? Are our Labels Defensible?
Edit:Once the Lagunitas vs. Sierra Nevada story broke, public opinion convinced Lagunitas owner Tony Magee to call the whole thing off. See his tweets below, noting how sometimes there’s the court of law and other times the court of public opinion. Again, the consumer discussion thread pointed to below gives you insight into how the public reacted to this one. This particular dispute-that-was may well beat out the Magic Hat / West Sixth catastrophe. Turns out the increasingly trademark-savvy public is quick to defend even the big guys, too.
Today, January 13th 2015, has been the worst day ever in 23 years of growing my brewery. Worst. Growing a biz involves defending a biz…
I had to know the Answer, but the Answer came much sooner than I thought and in a different Court than I thought it would. Can I say thanks? — LagunitasT (@lagunitasT) January 14, 2015
Original Story: I’m sitting out on really dissecting the Lagunitas vs Sierra Nevada trademark lawsuit involving the IPA packaging/lettering here (it’s 3:15-cv-00153, filed by Lagunitas on Jan. 12, 2015). There’s a lot of really wonderful attorney coverage and also consumer-reaction coverage out there. No doubt, you’ve likely already come across it and developed some opinions of your own. If you haven’t, I recommend starting here for some good links and balanced perspective on the pending brewery trademark lawsuit, including the original Lagunitas complaint.
As you start with your instincts and keep thinking about the issues, what I will do is provide some basic resources for curious onlookers trying to figure out what’s at stake here—and how this sort of thing would really be analyzed in court. If this thing even gets that far.
Next, the meat. Here are factors that a judge could ask a real jury to consider in determining whether there’s any sort of trademark infringement going on here. (I’m pasting in model jury instructions from the 9th Circuit website, within which the California federal court involved is located). Boiling it down a bit, the ultimate question (if this eventually gets to a jury) would essentially be, does Sierra Nevada’s use of the trademark(s) make it likely that an ordinary consumer would be confused, believing that Sierra Nevada’s goods originated from, were sponsored by, or affiliated with Lagunitas? These factors below help the jury make that determination.
Judge to Jury Instructions Used in Cases Like the Lagunitas vs Sierra Nevada Brewery Trademark Lawsuit
We don’t have all the evidence, but we do have this picture to start the conversation. Here are sample instructions a judge might give a jury in a case like this—what do you think?
“You must consider whether the defendant’s use of the trademark is likely to cause confusion about the source of the plaintiff’s or the defendant’s goods.
I will suggest some factors you should consider in deciding this. The presence or absence of any particular factor that I suggest should not necessarily resolve whether there was a likelihood of confusion, because you must consider all relevant evidence in determining this. As you consider the likelihood of confusion you should examine the following:
1. Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark.
2. Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.
3. Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar].
4. Actual Confusion. If use by the defendant of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.
5. Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion.
6. Marketing/Advertising Channels. If the plaintiff’s and defendant’s [goods] [services] are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.
7. Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and defendant’s trademarks.
8. Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion.
[9. Other Factors. Any other factors that bear on likelihood of confusion.]”
Now that you know what you know, what do you think about the Lagunitas vs. Sierra Nevada trademark lawsuit?
When you’re thinking about starting a brewery, it’s easy to feel daunted by the cost of it all. As we’ve covered elsewhere, there are strategies to get around those brewery start-up costs—and oftentimes funds are out there. (See all of our Brewery Start-up Series here.) Still, no matter how you fund the brewery, a significant business expense is the commercial lease. Understandably, brewery start-ups are reluctant to sign a lease and obligate themselves to rent payments too early in the process. For those considering opening a brewery, however, it’s important to note that in order to get a license to commercially brew beer, a brewery needs a premise. The premise, along with the start-up team, is what is licensed.
Commercial Brewery Lease and Opening Timeline
In other words, the brewery’s lease comes before the licensing application. (You can check out our general Brewery Opening Timeline here.) This is the case for the federal brewery license through TTB, which you apply for through a Brewer’s Notice and filing other information about the business owners. This is also the case for states such as Washington, seeking a Washington brewery license through LCB (Liquor Control Board).
This brewery-opening timeline is important to keep in mind, as it informs a start-up brewery’s budget and brewery business plan. However, there may be creative ways to alleviate some of this pressure. For example, a brewery may be able to negotiate reduced rent with its landlord for those first months, while waiting for licenses to come through. Or, to at least give the start-up team peace of mind, the brewery’s long-term obligation to pay on the lease may be made contingent on the start-up’s ability to obtain proper licensure.
Ultimately, when putting together a brewery business plan, it’s wise to be thinking about location early in the process. Not only does licensing depend on it, but the location itself, proximity to other breweries, parking configuration, access to foot traffic, and the like, can all play important roles in how successful a particular business plan will be.
Next Brewery Start-up Series:
In our next segment of the Brewery Start-up Series, we’ll discuss common premise-licensing issues and important things to consider when reviewing a potential premise or lease.