Lagunitas to Sierra Nevada: Let’s Call the Whole Thing Off

Edit 1/14/2015 at 2:06pm PST: Indeed, Lagunitas dismissed the lawsuit. Thanks to Twitter for breaking the news and the screen cap. As this fellow beer attorney points out and helpfully includes the filing, it’s dismissed in a way that Lagunitas could sue again, but I think we know what kind of uproar that would cause. That said, if anything was ever going to associate those two marks in consumer’s minds, certainly now this lawsuit will!

  See our coverage yesterday on the Lagunitas – Sierra Nevada lawsuit, directing you to the public’s overwhelming reaction in favor of Sierra Nevada. Lagunitas owner Tony Magee, via the tweets below, called yesterday the “worst day ever” in the brewery’s history and vowed to drop the lawsuit this morning. We’ll report back if that’s the case. Some Twitter followers are asking Tony Magee to apologize. Indeed, 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.

Read More

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?

Read More

The Skinny: Coppertail Brewing Co. v. Copper Top Brewery (Filed 10/29/2014)

The latest brewery v. brewery trademark dispute in district court. This one is between Florida breweries—the registered Coppertail Brewing Co. on the gulf side in Tampa and the unregistered soon-to-launch brewery Copper top on the Atlantic side in Wellington, FL. Docket No. 8:14-cv-02727
The latest brewery v. brewery trademark dispute in district court. This one is between Florida breweries—the registered Coppertail Brewing Co. on the gulf side in Tampa and the unregistered soon-to-launch brewery Copper top on the Atlantic side in Wellington, FL. Docket No. 8:14-cv-02727

Coppertail Brewing Co., LLC v. Copper Top Brewery, LLC is the latest brewery v. brewery trademark dispute to spill over into federal court. This brewery trademark matter is happening in Florida district court, the Tampa division. According to the complaint, plaintiff Coppertail is a Tampa-based brewery and defendant Coppertop is also a Florida brewery based in Wellington, FL which is on the Atlantic side, aiming to open in Boynton Beach. The complaint was filed on 10/29/2014 and, for those watching on the sidelines, you can find the documents and follow it at Docket No. 8:14-cv-02727 (M.D. Fla.).

We don’t have to spell out the concerns here. But, we will paint the timeline, for those curious about the ins and outs of the dispute. Plaintiff Coppertail filed a trademark on October 23, 2012 and obtained a registration. Per the complaint, Defendant Coppertop is a brewery under construction. It’s a straightforward complaint, alleging trademark infringement and unfair competition under the Lanham Act, while also including a count of trademark infringement under Florida common law. Further, as we always like to report, the complaint does state that the plaintiff Coppertail tried to resolve this matter privately with the defendant start-up brewery.

Also, we’ll note for the detail-oriented that although the defendant is “Copper Top Brewery, LLC” in the caption, the complaint refers the defendant as Coppertop throughout. Indeed, based on the brewery’s own promotional materials and recent articles, including a feature article today (10/31/2014) in the New Times Broward-Palm Beach, the defendant does appear to be using the “Coppertop” mark and not “Copper Top” as it appears in their LLC, Copper Top Brewery, LLC. Notably, too, take a look at the logo materials, with the emphasis on the “C” with quite similar lettering—with the defendant’s C almost giving the same fish tail like appearance that makes up the Coppertail mark.

The key takeaway for us, as always, is the importance of filing an intent-to-use trademark before getting too far along in building out the brewery, getting notoriety in featured articles, and investing too much—financially and emotionally—on a branding direction you may lose. No one wants to be in court, especially not at this early stage of opening a brewery, and taking proper steps to clear and then file a trademark well before launch will go a long way in giving a fledgling brewery brand confidence moving forward. See our notes on trademark clearance here, and here.

As always, we’ll let you know of any notable developments pertinent to the case.

Read More

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.)

Read More

Avoiding Headlines: Thoughts on the Lost Coast v. Aviator Brewery Trademark Lawsuit

It’s no longer surprising to hear about a brewery v. brewery trademark conflict. Even the non-legal-news follower hears about these disputes all the time, and most of what gets reported are conflicts during the registration process called opposition proceedings, which go before the Trademark Trial and Appeal Board (TTAB). Often, brewers come to an agreement before those things ever turn into expensive disputes, and filing an opposition or an extension of time to oppose can be more of a way for a brewery to preserve the issue and buy the time to come to an agreement before the other brewery’s mark registers. At any rate, what are far fewer are true brewery v. brewery lawsuits being played out in federal district court. These sorts of lawsuits tend to be more expensive, the stakes are high, and—of course—they also typically get resolved (at least, we always hope) before a judge or jury makes the call.

With that backdrop, we’re here to report that another brewery v. brewery trademark dispute has made its way into federal court in the United States District Court for the Northern District of California. This time, it’s the brewery we all know as Lost Coast from California (technically named as Table Bluff Brewing, Inc. as the plaintiff in the suit), and the alleged beer trademark infringer is Aviator Brewing Company from North Carolina. You may have seen some reporting on this elsewhere, and we need not comment too much on the case. The pictures tell the big part of the story on this one. But, what interests us maybe most of all is the story behind the story, which we can’t know and can only guess about. But, as a beer law firm, it’s the story we’re a part of all the time: helping breweries avoid getting into court and into headlines because of these potential disputes.

It would surprise us if Lost Coast didn’t attempt to reach out and settle this privately. After all, who wants to spend the $400 and the who-knows-how-much in attorneys’ fees in putting a complaint together? And, from the looks of the complaint, Lost Coast is in a pretty good position. They obtained a federal trademark registration for their Great White design all the way back fourteen years ago in 2000.

Again, they didn’t merely register the word “GREAT WHITE” but they registered the design itself. The design registration includes the following in its description: “A fanciful cubist style shark stands on a sandy beach holding a surfboard in one fin and a mug of beer in the other. The surfboard has a bite taken out of the top of it.” You’ve seen the Aviator design, so you know what’s at issue. But, from our very basic research, it doesn’t seem like Aviator even formed as a brewery until the late 2000s. Again, we can only guess that these breweries got in touch before filing the suit, but it’s a pretty good guess. And, although we can’t fault Aviator for trying to negotiate hard to keep some rights to what is a cool design and, no doubt, an important brand to them, we also feel bummed for both breweries and the brewing industry generally that another one of these trademark disputes has made the headlines.
It’s always our goal at Reiser Legal to help breweries resolve stuff behind the scenes. And, we are consistently amazed and delighted at how brewery owners are willing to give up a little turf that they may well have a better claim to, just to help another brewery out and avoid generating any bad blood. Really, the camaraderie in this industry is downright inspiring. Of course, when the overlap between two marks is too great, there’s not a lot that can be done to get a workable coexistence agreement in place. And, breweries like Lost Coast are totally within their rights (and positively charged with the responsibility) to enforce their registered marks.

Outside of the nitty gritty of this particular dispute, from our chair, there’s some wisdom in this one for any brewery that chooses, for whatever reason, to avoid registering all of its beer names and designs. It’s always a brewery’s own business call to invest in registration, and as this dispute and others highlight, we all can see why it’s well worth it. But, if the money’s not there or a brewery chooses to take a gamble on a design/name without registering, there’s a more affordable option that can at least offer some protection. A brewery might consider at least having its attorney make sure no one else has a substantially similar design or word mark already registered. That way, a brewery can generate bona fide common law rights, hopefully encouraging others to steer clear of that design/word mark—a better position than potential infringement from the start.

Last, we’ll nerd out on a legal thought, and welcome comments from our fellow beer and TM attorneys. There’s no copyright claim in Lost Coast’s complaint. We see at least that minimal spark of creativity here, and being able to prove 17 U.S.C. infringement, even if it’s just the threat of liability in encouraging settlement, offers potentially more to the plaintiff than under the Lanham Act. Maybe the brewery hopes to get this one out of the way early, with the least expense. Then again, it does seem worth amending to add another cause of action. What do you think?

We’ll keep you posted here as this one progresses.

Read More