Lagunitas vs Sierra Nevada: Be the Jury

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.


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.

First, for fun—as an example of how some consumers are feeling—you can check out this coverage with consumer discussion bubbling up in the comments.

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?

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