Brewery trademark disputes. We’ve held off on reporting on them for a while. In partial part, it’s because there have been so many—we couldn’t keep up with coverage here, even if we wanted to do so, and mainstream media is all over getting the word out. In partial part, it’s also because we have been addressing the growing trademark needs of our own clients, from proactive trademark investigation to early application, enforcement, and beyond. It’s kept us very busy. Nevertheless, the latest dispute to hit federal court comes to us from this writer’s home state of Indiana—so I felt the need to note the ongoing dilemma of names and beverage businesses.
This dispute is between Colorado’s Great Divide Brewing Company (the plaintiff, or the one who filed the lawsuit) and Indiana’s Red Yeti Brewing Company (the defendant). The case was filed in the United States District Court in the Southern District of Indiana, and is on the docket of a Magistrate Judge with whom I had an externship while in law school, Magistrate Judge Debra McVicker Lynch. I’ll be closely following this one.
We don’t need to dive too far into the complaint itself or the legal jargon to get at the case’s issues. It’s fairly simple.
Great Divide has a trademark registration for YETI as a word mark (Reg. No. 2,957,257). Great Divide also has a trademark registration for a design mark containing an image of a yeti (Reg. No. 4,115,050). Great Divide is taking issue with the use of YETI in Red Yeti’s name, and they are also taking issue with Red Yeti’s logo.
This sucks, for everyone. No doubt, this will get swept up into the media, and there may be a frenzy on social media about it. Each brewery will get cast in a not-so-nice-light by someone somewhere, regardless of your feelings about the matter itself. Red Yeti may be called out for all the similarities between the brands, particularly the design mark. Great Divide may be called out as part of the public outcry these days—perhaps about how there’s a dwindling number of names that breweries, wineries, and distilleries haven’t used yet, about how it’s next-to-impossible to find a clear name.
We hear this latter lament from clients and would-be clients almost everyday. It’s a real one, although I am constantly amazed by just how many good brands are available. Indeed, with a little strategizing, coupled with hearty investigation, a would-be brewery or beverage startup can be best positioned (although never outright guaranteed) to avoid these sorts of headlines, costs, and frustrations. After all, it ain’t cheap to rebrand a brewery, and it’s not fun either. And, it’s especially (fiscally, emotionally) expensive to deal with litigation.
If anything, this trademark dispute highlights a common line of misconception—one we’ll take the chance to point out here. Although it might be beer name on the one hand, brewery name on the other, it doesn’t necessarily matter. Both are uses in connection with beer. Just because someone is using something as a product name, it doesn’t mean you can use it as a house mark. To highlight this issue, one might expect problems by naming a brewery PLINY THE ELDER BREWING CO., drawing heat from Russian River. Moreover, if I named my brewery DARK LORD’S BREWING CO. I might expect a swift note from the folks over at Three Floyds. In these examples, you can see how descriptive words like “BREWING CO.” do not help much. Moreover, if I added a color—BLACK DARK LORD’S BREWING CO.—it doesn’t help much either.
On a similar note, just as there’s no distinction these days between a brewery and a beer, the trademark powers that be tend to not see much of a distinction between a brewery, a winery, a distillery, beer, wine, cider, mead, whiskey, tequila, and so on. If there’s prior use on alcohol or someone who makes it, and similarity between the marks, then it’s a potential problem. Certainly worth exploring.
Here’s hoping the parties swiftly find resolution.