Brewery Trademark Woes Spill into Another Federal Court

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.

This is Great Divide's trademarked design, U.S. Reg. No. 4,115,050.
This is Great Divide’s trademarked design, U.S. Reg. No. 4,115,050.

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.

 

Read More

Seattle Brewery Trademark Dispute Gets Acidic: Issues with “Tangerine Wheat”

Striking close to home, today I report on a Seattle brewery trademark dispute. Since it’s on my home court, it’s only fair if I wax a little poetic.

As you might have read by now, Eureka, California’s Lost Coast Brewery issued a trademark cease and desist to Seattle brewery Peddler Brewing Company (available here), which is nestled in the bustling Ballard brewery district. This particular cease and desist has become somewhat controversial over its content. The gist is, Lost Coast holds a registered trademark for “Tangerine Wheat.” Peddler Brewing Company was packaging and selling the product shown here, with this label. It was, naturally, a tangerine wheat beer.

First, there has been some confusion about how Lost Coast obtained a trademark for a term that is descriptive. And, there’s no doubt the term is descriptive. Keep in mind that trademark law does provide a way for you to get extra rights in descriptive terms. Although, as I’ll cover soon, they’re not completely rock solid even when you do get them. At any rate, the way to get these presumptions is to engage in substantially exclusive use of the mark for a period of five years. In this instance, the USPTO initially refused Lost Coast’s mark, to which Lost Coast averred that it had been using the mark in substantially exclusive use for the statutorily required time. Refusal overcome.

So, some onlookers might see an issue with this. Is it fair to lock up terms that are descriptive? Well, no it’s not. And that’s why a descriptive trademark registration, if it can even be obtained, is not the preferable way to go. That’s because trademark law includes a doctrine of “fair use.” The defense lets anyone make “a use, otherwise than as a mark… of a term or device that is descriptive of and used fairly and in good faith only to describe goods or services of [a] party, or their geographic origin.” 15 U.S.C. § 1115(b)(5)(A)-(C). This defense applies to every kind of trademark. However, you can imagine that if you have a descriptive trademark, it’s most certainly going to invite issues of fair use.

So, what does this “fair use” doctrine really mean? As you might have guessed initially, nothing about the Lost Coast Tangerine Wheat trademark says that no one else can brew a tangerine wheat beer. That’s a given. And nothing about the trademark locks others from saying so on their labels. All the Lost Coast Tangerine Wheat trademark does is prevent users from using the mark (1) as a trademark in (2) a confusingly similar way. Lost Coast can’t control anyone’s use in the fair descriptive sense (think size, placement, styling, as discussed in the comments to this article). Of course, (expensive) battles can be fought over which is use is which, and that’s probably why Peddler decided to fuhgettaboutit and call it a Tangerine Hefeweizen, as depicted here from a post on Peddler’s Facebook page.

It might help to know, when does a use of a term become a trademark use? I posit that it can be a fine line in the beverage industry. Traditionally, one way you can test to see whether a given use is trademark use is applying the “brand” rule. If you can insert the word “brand” after the use and it makes sense, then that’s use as a trademark (so use your TM or Circle-R accordingly).

Example: These are the three Peddler Brewing employees.

The employees are not Peddler Brewing brand. They’re the company’s. That use isn’t being used as a mark.

Example: Peddler Brewing once brewed a tangerine wheat beer.

Okay, well this is a bit of a trick question. Peddler Brewing isn’t being used as a trademark here, and this one is going to come down to whether the use is as a mark. I have it in lowercase here. Would your opinion change if it was capitalized?

To that, it’s worth taking a look at this design for Lost Coast’s “Tangerine Wheat.” I recognize that the brewery likely made more independent use of the name “Tangerine Wheat” on tap lists and elsewhere, but do you think this use of “Tangerine Wheat” is necessarily as a trademark at all? Is “Tangerine Wheat” telling you, the consumer, anything about the source of this beer? Or is it “Lost Coast” who has a tangerine beer, or perhaps “Lost Coast Tangerine” (or, this example, “Tangerine”) that’s what’s forming your impression?

This gets at a peculiar question I’ve been mulling over for a while now, and would love to toss it out here for your thoughts. In beer, when is a style signifier being used as a brand, and when is it just a style signifier? Moreover, when does use as a brewery name + beer name become a unified mark forming a solitary consumer impression (independently or, at the very least, in addition to the brewery brand name and the beer brand name)? In some instances, it’s not quite as easy to discern. (Although, I will note, Sixpoint seeks trademarks for all of their beer names with their brewery name first and the beer name itself following, so it’s one unitary mark, e.g., “Sixpoint The Forager”; “Sixpoint Nasty Tyger Ale,” etc.). That’s a unitary brand. And, I’d argue that every brewery has common law rights to its unitary brands as well. For example, Russian River has a beer Pliny the Elder. If I release a “Russian Elder” beer, I think we’d have problems, because I believe Russian River has a common law claim to Russian River Pliny the Elder, and that’s just the point. But I’m getting away from the heart of this particular brewery trademark dispute. Some more relevant examples.

When you see it on a bottle, is Left Hand Milk Stout a brand all together? Is Sierra Nevada Pale Ale? Or do you see two brands there? Left Hand and Milk Stout? Sierra Nevada and Pale Ale? Certainly, in the RR/Pliny case, both brands are at work independently. As I noted above, I’d say they’re at work together too. But in the Left Hand Milk Stout instance, is Milk Stout doing any sort of independent branding work for you?

So, let’s return. Take a look at the label again. Do you see Peddler Brewing Tangerine Wheat brand beer? Or, do you see Peddler Brewing brand beer, in this instance a tangerine wheat. Or do you see two brands, Peddler Brewing brand beer and Tangerine Wheat brand beer, each pointing to the same source?

If what we have here is the unitary brewery trademark— Peddler Brewing Tangerine Wheat—would you even say it’s confusingly similar to “Tangerine Wheat”? Or, does the dominant leading portion of Peddler Brewing do enough to tell you about its source. Perhaps this gets to a deeper question, apart from the trademark registration, does “Tangerine Wheat” tell you anything about “Lost Coast”? Or is it always a Lost Coast Tangerine Wheat to you? Looking outside the beer industry, where we love naming individual beers, was it a Mountain Dew Code Red? Or both a Mountain Dew and a Code Red to you? Does your opinion change if it was Mountain Dew Code Red Soda? Assuming it was just Mountain Dew Red Soda, would  they have extra rights to Red Soda if they had gotten to the term first? Wouldn’t “Red Soda” just be generic as what the product itself is? Is a beer always just a beer? Or is the beer style (a tangerine wheat) the generic product itself? I posit that a term like tangerine wheat, on the spectrum of distinctiveness, has a high risk of falling into the generic trap.

I think these issues of unitary marks are going to be an increasingly fascinating issue in the beer world. Take again my example of a hypothetical Russian Elder Brewing Company (Russian River / Pliny the Elder). Or a Three Dark Lord (Three Floyds / Dark Lord). Or even a Dog Minute (Dogfish Head / 90 Minute).

And one last caveat, even if I’m singing only to a choir of beer trademark enthusiasts by now. Every brand should be aware of the trademark death knell, and that is genericide. When the mark itself becomes the generic term for the thing, the trademark owner’s mark is subject to cancellation. ‘Tis no more. This is why if you look carefully on your Kleenex package, it lets you know that they’re Kleenex “brand” tissues, because Kleenex cries a little into their kleenex every time you refer to a kleenex as a kleenex. They don’t want to go the way of linoleum which once, indeed, was a brand. What do you think?

I think it’s arguable that an I.P.A. or a Porter is very much a generic (and not descriptive) term. To consumers, it’s perhaps the thing itself, as opposed to those terms being descriptive and “beer” being the generic term itself. The same way we could theoretically describe all vehicles as motor vehicles, but “car” and “truck” are generic terms too.

Is a tangerine wheat just a product? Well, Lost Coast hopes not. And the moral of the story is, that when you’re dealing with a descriptive mark, you might just have to spend to keep it that way.

Read More

Is Your Distributable Beer Brand Trademarkable?

Your beverage brand is racy, but it passes label muster thanks to the First Amendment. Can it be denied a trademark?

Credit goes to my beer trademark law chum Alex Christian over at Davis Brown in Iowa for pointing out this nuance, which is worthy of a post of its own today. In the past, I’ve written about the issue of having a potentially trademarkable beer name or logo, yet not being able to distribute that beer because of Certificate of Label Approval (COLA) issues. That is, the Alcohol and Tobacco Tax and Trade Bureau (TTB) may control a brewery’s speech on labels when, for example, the label is misleading, touts the intoxicating effects of the beverage, or would be appealing to kids. More on that here. Essentially, in that scenario, a brewery might have an otherwise trademarkable piece of branding material, but be unable to obtain a COLA to put that label or beer name into interstate commerce.

Here’s a different scenario. Imagine your beer name itself is distributable. It isn’t misleading. It’s not touting the effects of alcohol. It’s not appealing to kids. Now, if the label has subjectively “racy” content, we know the First Amendment is going to kick in and protect that brewery’s speech on the label. See my post last week on the case of Flying Dog and its Raging Bitch beer label, which caused a bit of a stir with Michigan’s Liquor Control Commission, which had initially (and improperly) rejected the label, contrary to Flying Dog Brewery’s First Amendment rights.

Could it be that the reverse is also true? That is, can you have a distributable beer label or brand that is not trademarkable? Indeed. The United States Patent and Trademark Office (USPTO) operates under the framework of the Lanham Act. Bear in mind that within the Lanham Act, USPTO is to refuse a mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter . . . .” There are a few other grounds for refusal, outlined in 15 U.S.C. § 1052. In fact, readers might be aware of the ongoing matter involving the registrability of “Redskins.”

So, you might say, wait a minute. If the First Amendment protects the government from restricting labels with subjectively scandalous content, then how can USPTO refuse registrations on this sort of ground?  You might wonder, can USPTO, the Trademark Trial and Appeal Board (TTAB), and courts applying the law really do this, without affronting First Amendment rights? So far, they can. The distinction is that, by not granting a federal trademark, the government has not prevented the party’s use of the mark. You can speak on. The use would just not be granted the presumptions and protections connected with a federal trademark. A great case on point here was the matter of 1-800-JACK-OFF, a trademark sought for services it doesn’t take much imagination to determine.

So, in sum, some trademarkable beer names are not distributable. In the reverse, some distributable beer names are trademarkable. In the case of Flying Dog Brewery, however, they do have a trademark for their “Raging Bitch” brand of brew. In fact, I was surprised to see just how crowded the field of “Bitch” marks is on alcohol beverages. Among them, we have the pure and simple “BITCH” mark, as well as a battery of marks from different owners, with most of these bitches seeming to favor wine brands. You’ll find “HAPPY BITCH” but also “CRAZY BITCH”, “NASTY BITCH”, the nautical-themed “BEACH BITCH” and then “JEALOUS BITCH”, though that “RICH BITCH” is no longer protected.

At any rate, when developing a standout product for a brewery or beverage business, it can be fun to push the boundaries with creative ingredients and processes. To match the brew’s personality or create some pop on a crowded taplist or retail shelf, it can also be tempting to push the boundaries with the brand material itself. The First Amendment does kick in to protect a brewery’s speech on its labels, allowing all kinds of vulgar things to potentially come to market. Thanks, Bill of Rights! Nevertheless, so far, to develop a brand under the protections of a federal trademark, you’ll have to keep it a bit cleaner. In fairness, although it’s still a subjective call at the end of the day, the powers that be who review trademarks take a pretty measured approach in determining whether a mark warrants refusal for these reasons under the Lanham Act. Still, for any brand owner or marketer, it’s important to know the line exists.

Read More

Avoiding a Brewery Trademark Dispute: Here’s How.

If there is any brand material you would be upset to change, conduct a full clearance search and file an intent-to-use trademark application before you adopt the mark. Don’t wait. Indeed, as this matter highlights, a mark you might think is clear can become fraught with problems in just a couple of weeks. Your filing date is the basis for your federal rights. Without a federal priority date, you might wind up locked out of using that brand name anywhere but your hometown. There’s no reason for that, especially if the brand in question is your brewery’s name or main logo.

Today, if you’re investing in a brand, especially if you’re getting packaged branded material to the shelves and have any aim to expand, file. Clear today, file today. File. The up-front investment is minimal compared to the costs to your brand and to your budget if you bump into issues with another beverage company. Put a little more into your start-up budget. Make proactive brand protection a part of your ongoing recipe-production and beer-release strategy.

I don’t know anyone who has regretted having the registration.

Read More

The Skinny on Red Bull vs. Old Ox Brewery: Understanding this Brewery Trademark Dispute

Here’s what Red Bull vs. Old Ox Brewery is and what it isn’t. If you read the Brewery Law Blog, you know I love craft beer trademarks more than the average Esquire. Same goes for craft cider trademarks, mead trademarks, the whole lot. Over the last year, I’ve appreciated seeing the public get fired up about a craft beer trademark dispute in the making. Having said that, there’s a lot of misinformation out there. This is especially the case when word of a brewery trademark spat takes off and spreads all over social media, as it definitely has this time. A lot of the misunderstanding stems from not knowing exactly what’s at stake in any given trademark dispute.

What Red Bull vs. Old Ox Brewery isn’t:

This trademark dispute is not a lawsuit over whether Old Ox Brewery can use its name or logo. This dispute has not reached federal court. It is not a lawsuit. That might happen. But, so far, this matter has nothing to do with whether Old Ox Brewery can call itself Old Ox Brewery or whether they can use their logo.

What Red Bull vs. Old Ox Brewery is:

This is an administrative opposition proceeding. This involves whether the United States should grant Old Ox Brewery a federal trademark (which gives you important rights). So, this matter completely involves Old Ox Brewery’s right to register their brand name. It has nothing to do with whether Old Ox Brewery can use that brand name. Of course, Old Ox Brewery may not want to use a brand name if they can’t use it with the benefit of important federal trademark rights.

How the Red Bull vs. Old Ox Brewery dispute came to be:

We can’t know all the details and interactions. But, here’s how these sorts of proceedings typically get started.

  1. Old Ox Brewery prudently sought to protect its intended brand name. It applied for an intent-to-use trademark for both its name and its logo. Breweries can file intent-to-use trademarks, before they ever open up, so they can feel confident moving forward and investing in their brand and branding materials. If you read the blog, I champion proactive brewery trademark clearance and registration quite a bit.
  2. The United States Patent and Trademark Office (USPTO) examines every trademark application that comes in, and looks to see whether the mark should be allowed to register. There are technical defects in applications, and then there are issues like the mark being too descriptive or too similar to another registered mark.
  3. If USPTO thinks the mark is okay, the mark publishes for thirty days for others to review. Here, Old Ox Brewery’s marks published on September 30, 2014.
  4. Publication is a chance for everyone else outside of USPTO to protect their interests. Whereas USPTO may not find a problem with a mark during its limited review, actual brand holders have an important stake in their brand. They may see an issue with a potential mark that USPTO doesn’t or doesn’t catch, and publication gives everyone a chance to prevent a mark from registering. Keep in mind, if a mark registers, it gets important rights and becomes more difficult to combat.
  5. Red Bull no doubt has a legal team all over the USPTO Gazette (where marks publish each week). Notably, beer is in the same trademark class (032) as energy drinks, soda, bottled water, etc. That’s likely how Red Bull found it so quickly. They monitor Class 032 every week for problematic uses. However, bear in mind class has nothing to do with whether two marks are confusingly similar, it’s merely an administrative convenience for USPTO. Confusing similarity will turn on a number of things, including comparing the actual goods in the application vs. Red Bull’s.

Why Red Bull is doing this, even if you don’t think the marks are similar:

Opposition proceedings are relatively cheap. If a trademark owner sees a problem with another mark, an opposition proceeding can quickly nip it in the bud. It costs $300 to file and not much time to prepare a notice of opposition. On the other side, often small brands feel scared and don’t want to fight (or don’t have the funds to fight), so they willingly abandon their mark. This is often the case when it’s an intent-to-use mark (as Old Ox Brewery’s is), which typically means the mark isn’t yet in use at all or, at the very least, hasn’t been used too widely for very long. It appears Old Ox Brewery has been in operation for about seven months. So, $300, one filed document, and Red Bull potentially never has to worry about whether the Old Ox marks really are confusing again—because they’re gone. Some might think that’s bullying, others might think it’s effective brand protection.

What often happens behind the scenes in scenarios like the Red Bull v. Old Ox Brewery:

Usually, everyone wants out of an opposition proceeding. Here, Red Bull admittedly has a lot more in its cash reserves than the typical opposer. What can happen is that the two brands come to some agreement. They iron out a “coexistence agreement” which is essentially a plan for both brands to coexist in the marketplace to avoid consumer confusion. That might mean that one brand avoids the other’s colors and imagery or that Old Ox Brewery never makes an energy drink or a soda of any kind. In fact, given Red Bull’s statements to the media, it looks like they do want to iron something out:

“Red Bull has not sued anyone. Brands, big and small, seek to protect their trademarks every day. All we are asking for is to allow the administrative process at the US Patent & Trademark Office to run its course and we remain hopeful that a fair settlement can be reached by both parties.”

What could happen in Red Bull v. Old Ox Brewery:

If they don’t strike up a coexistence agreement, a few things could happen. Old Ox Brewery could forget about its trademarks and give up fighting on the USPTO front. As I highlighted before, though, this has nothing to do with whether Old Ox Brewery can use those marks. This is not a lawsuit. We might expect a full-on lawsuit from Red Bull in federal court, which they could file at any time given Old Ox is using their marks already in a territory Red Bull no doubt is in. Whatever you think of Red Bull’s merits in the lawsuit, they certainly have the most cash in the bank to drag things out and make it hurt. Thus, we typically a smaller brand like Old Ox Brewery just change its name, to avoid sinking cash into something like this, when it could be using that money to fuel its awesome growth. Meanwhile, whatever the outcome, Red Bull has scared off other users from adopting anything with the word “Ox” in the name going forward, showing everyone just how broadly they construe their brand. We’ll see where this one goes.

It’s also worth keeping in mind that beyond any confusing similarity between the marks, Red Bull can also toss in a claim of trademark dilution. If you have a famous mark, there’s an additional mechanism to protect it. We didn’t see this ground included in Red Bull’s Notice of Opposition, but it’s certainly something extra we might see tossed into any federal lawsuit, which would add even more to defend against, whatever you think of the merits.

Red Bull v. Old Ox Brewery, The Wrap-up:

I hope that gives everyone better insight into the Red Bull v. Old Ox Brewery matter. When reviewing an emerging trademark dispute, it’s important to pay attention to where it is procedurally. Is this in federal court involving a right to use a mark? Or is this an administrative proceeding before the Trademark Trial and Appeal Board involving a right to register a mark? That can help onlookers understand exactly what’s at stake. For more on trademark law, and why federal trademark rights matter, see our Brewery Trademark Law Explained (In a Nutshell) post here.

Read More