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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Shoot an Email, Save Thousands: The Best Advice I Can Give You About Your Trademark Issue

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Just click send.

 

Trademark issues are becoming the single most popular legal topic amongst breweries. I hear the gripe in brewer meetings, client calls and publications across the web. The world of beer is shrinking and the pool of names is shrinking.

 

 

Do we have enough words left to continue naming beer creatively? Should we just stick with descriptive monikers like IPA, Pale, ESB and so on? I say nay to the latter. Brewer creativity is at all time high as we are seeing more new styles, style-less beers, and blended concoctions each day. So keep this creativity rolling and let’s figure out a better way to handle it.

 

Here are a few things that you need to know about beer trademarks:

 

 

  • The US Patent and Trademark Office no longer distinguishes between beer, wine and spirits. In the past, someone could get a TM registered for “rickshaw” in all three classes. Nowadays, as the disappointing Black Raven/Ravenswood action taught us, the USPTO considers each of these classes “related products” and that a mark in one class will likely cause confusion with the same mark in another class. So, if you find a wine or liquor brandishing your name – it is best to look elsewhere. 

 

  • If you are in the clear, you need to register quickly. The law allows a person to file for registration before even using the mark, by filing a 1(b) application with an intent to use the mark. By law, you are entitled to file a total of five (5) individual six (6) month extensions (a total of 30 months) to show the USPTO that you are indeed selling a product using the mark in interstate commerce (better find your favorite over the border store!).

 

And now for my best advice. This advice can save you thousands of dollars someday – and lawyers might hate me for it.  If you have a dispute over a mark that you want to use, or that you currently own, here is what you do: TALK. DON’T SUE. The brewery community is a tight one, even though it continues to grow every day. By simply shooting an email to someone who has a potential right in the mark – or a potentially conflicting use – you can save thousands of dollars, months of time, and respect in the brewery community. Heck, some breweries have even turned these conversations into a collaborative, and very profitable, brew.

 

There is a time to file a lawsuit to enforce your trademark rights – and it is nowhere near the time you first learn of a potential problem.  Breweries are pulling the trigger on a legal letter from their lawyers way too early these days. There is always an opportunity to resolve the dispute well before the letter goes out. Once the legal letter goes out, you immediately put the recipient on the defensive. So please offer an olive branch first, before you pull out the guns.

 

Your attorney should be more than willing to help you come up with the right words to say in your initial discussion – it just does not have to come on their letterhead.

 

 

 

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