New Rogue Lawsuit: Rogue v. Gone Rogue Pub – Filed October 14, 2014

A brief interruption to our dormant commerce clause constitutional beer law nerd-out, to bring you some breaking brewery trademark news. Rogue may have settled one trademark lawsuit, but yesterday they entered another. The case is captioned OREGON BREWING COMPANY v. SCOUT LLC, dba GONE ROGUE PUB and it’s 1:14-cv-00439 for those looking on the docket.

We’ve reported before about Rogue’s litigation against Rogue’s Harbor Inn, which settled out on August 11, 2014 (see image for details there). Yesterday, on October 14, 2014, a little over two months since getting that dispute out of the way, Rogue’s back before the bench. This time, Rogue has filed a complaint in federal court against an Idaho bar that opened in 2012 under the name “Gone Rogue Pub.” Rogue has its concerns, given they have a registration in restaurant services, on beer, on beverage glassware, and on clothing.

In Rogue’s complaint (again, as always, under Oregon Brewing Company—speaking of, glad they picked a more defensible trademark for their branding), they allege that Gone Rogue pub has some of Rogue’s own branding up inside the bar, that the word Rogue appears on the pub’s branded glassware and coasters there, and to throw salt in the wound: the pub has specifically identified serving Rogue beer in press releases.

Cheers to Rogue, as their complaint states that Rogue reached out to Gone Rogue Pub early on in 2013 and tried to get some kind of coexistence rolling, so the pub wouldn’t have to completely change its name. That was a year and a half ago. Per the complaint, the owners directed Rogue to their attorney, and the attorney didn’t respond to Rogue. Then, a few months ago in August (the same month the Rogue legal squad finally took a breather after Rogue’s Harbor) talks/negotiations were not successful when Rogue again initiated them.

Given the press release and also the use of Oregon Rogue-branded stuff in the bar, the court might infer some bad faith here, which would not be good news for Gone Rogue Pub. Also, I would imagine Rogue’s olive branch is no longer leafy and green after being forced to draft and file this complaint, instead of being able to quietly hammer out an agreement.

Below are the counts in the complaint. We’ll see what sticks, unless Gone Rogue Pub comes to the bargaining table and it settles. Stay tuned to the Brewery Law Blog, as we’ll keep you updated on this one.

COUNT I
TRADEMARK COUNTERFEITING UNDER THE LANHAM ACT
(15 U.S.C. § 1114)

COUNT II
TRADEMARK INFRINGEMENT, UNFAIR COMPETITION AND FALSE
DESIGNATION OF ORIGIN UNDER THE LANHAM ACT
(15 U.S.C. § 1114)

COUNT III
TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND
FALSE DESIGNATION OF ORIGIN UNDER THE LANHAM ACT
(15 U.S.C. § 1125)

COUNT IV
CYBER-SQUATTING UNDER THE LANHAM ACT (15 U.S.C. § 1125)

COUNT V
UNFAIR BUSINESS PRACTICES UNDER IDAHO LAW
(I.C. §§ 48-601 et seq.)

COUNT VI
COMMON LAW TRADEMARK INFRINGEMENT
(I.C. §§ 48-500 et seq.)

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Left Hand Answers Complaint in Lawsuit Over “Black Jack” and “Sawtooth”

Left Hand has answered the complaint in the DuClaw v. Left Hand dispute over the right to use BLACK JACK and SAWTOOTH on beers. Left Hand raises, count ‘em, 18 affirmative defenses and a number of counterclaims. Review our original coverage of this matter here. In a nutshell, it’s a case of a junior user registrant (DuClaw) versus an unregistered senior common law user (Left Hand), whose trading territories just crossed per Dawn Donut when Left Hand expanded into Maryland.

Before digging into the trademark issues at stake here, we’ll note that taking both sides’ timeline of the events, Left Hand could have raised a copyright claim against DuClaw, though that claim more than likely accrued too long ago to be actionable now. Check out the similarities between the two “Black Jack” designs.

Anyhow, turning to the trademark matter, the gist of Left Hand’s position is that DuClaw knew or should have known about Left Hand’s senior use, thus DuClaw fraudulently obtained its registrations for BLACK JACK STOUT and SAWTOOTH from the USPTO, and those registrations should be cancelled. It’s interesting because although the Lanham Act opens up a registrant to cancellation of their trademark if the mark was obtained fraudulently, see 15 U.S.C. §1064(3), the statute never defines “fraudulently.” It’s clear that having knowledge of an existing common law user yet seeking nationwide trademark rights as opposed to concurrent use does satisfy this “fraudulent” test. But, emerging TTAB decisions seem to suggest that if an applicant acts with reckless disregard for the truth or perhaps something more, the underlying registration can be a fraudulent one, too.

If this line of thinking holds up, it’s clear that today, a brewery looking to name itself or its new beer runs the serious risk of defrauding the USPTO by registering a beer or brewery name without conducting a clearance search—at the very least, Googling the potential name. But, given the availability of search tools, it’s possible a brewery would be affirmatively charged with doing much more. That aside, assuming there’s a reckless disregard standard that applies in this DuClaw case, it’s harder still to think about what constituted a thorough enough search to avoid recklessness back in 2001, when DuClaw initially filed for its marks. Google was just a fledgling search engine, not founded until 1998, and who knows what its boolean bretheren among the ranks of Jeeves, Yahoo, or Alta Vista could even pull together about beer names and brewery names back then, especially when breweries themselves probably didn’t all have websites. What’s more, although Left Hand notes that it sought state-level trademark protection and had obtained COLAs for its marks, it’s unclear just how accessible and searchable these registrations/documents were then.

In its answer, Left Hand points to GABF awards, write-ups in industry mags that circulated in Maryland where DuClaw was doing business, and other sorts of things you might infer actual knowledge from. Even more notably, Left Hand does allege that it was actually distributing in Maryland, Virginia, and Washington D.C. “[a]s of the registration date” of DuClaw’s marks. Keep in mind that the filing date is what matters, at least since November 16, 1989, and at any rate, this is all trickier still because it doesn’t seem Left Hand has been continuously distributing in Maryland since then, arguably abandoning any common law rights it had in Maryland, if it had them. Further, if Left Hand has established and retained superior rights in Maryland, Left Hand hasn’t seemingly asserted those allegedly superior rights in more than a decade. Indeed, if the oft-pleaded doctrines of acquiescence and laches ever had a prime place, this would be a time to assert them.

We’ll see what the court decides to do with this increasingly messy dispute, and will keep you updated here. Our takeaway, though, is that in order for breweries and beverage businesses to avoid lawsuits like this in the future, and avoid cancellation of their marks, it’s essential to run a thorough clearance search. It’s a small up-front investment to avoid losing the brand you’ve built up, not to mention the expenses associated with filing and registering a mark that eventually gets cancelled or limited, in addition to all the costs involved in having your lawyer help you navigate threatened or pending litigation. What is more, this case further suggests that, though it may not be fun to do, a trademark owner is best served by taking timely action to protect your own marks when you see others who might be infringing them. Of course, as we’ve noted in the past, there are better ways to do this than to send a sharply worded cease and desist, and oftentimes both breweries can find a way to co-exist. Indeed, we’ll credit Left Hand. They seem to do their best to reach out for the start of a settlement handshake by making an alternative argument in their answer: DuClaw can take exclusive rights to Maryland, where DuClaw is and has been conducting business for a long time now, but Left Hand would like to take the balance of the US.

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State of Texas Replies in Support of Its Motion to Intervene in Alamo Beer Brewery Trademark Dispute

The Alamo
The current trademark dispute involves rights to use “Alamo” as a trademark, including the silhouette of the historic building.

 

 

 

Texas is insistent about wanting to be in the Alamo Beer v. Texian trademark lawsuit going down in the Western District of Texas, San Antonio right now. As we’ve been reporting, the pendent dispute involves rights to use the mark on beer, and Texas believes it has superior rights to both the plaintiff and the defendant in the lawsuit.

Alamo Beer responded to Texas’s motion to intervene as we reported here, and this past Friday, May 9, 2014, Texas filed a reply. As we expected, Texas chides Alamo Beer for arguing the merits of the case, reminding Alamo Beer of the court’s posture in deciding a motion to intervene. Although Texas insists intervention as of right is appropriate here, we are not persuaded. Indeed, the weakest part in Texas’s argument also receives the least amount of treatment in Texas’s brief. That is, intervention of right is only appropriate if disposition of the current matter between Alamo Beer and Texian would impair Texas’s ability to protect its interests. We don’t necessarily think it does. Inclinations aside, Texas cites no case law for the proposition that a trademark owner should be afforded intervention as of right in a trademark dispute involving the same or a confusingly similar mark, or one that is dilutive of its famous mark. Texas cites back only to its brief and proposed complaint, observing that: “As Applicant’s Motion and Complaint make clear, should the court determine that either party has enforceable rights in marks depicting the Alamo, future attempts by Applicant to assert ownership of THE ALAMO Marks would be impaired.” Motion at 4.

Permissive intervention is another story, and if the court feels inclined to let Texas in, we think it has good grounds to do so. This is an interesting case, and we’ll let you know how this step in this increasingly-complicated brewery trademark lawsuit comes out.

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