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.

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Why Every Brewery Should Care About Copyright Law: Part 1 of 2

At this point, you know trademarks are important. But, despite the common misconception, a trademark is in no way a substitute for a copyright. The reverse is also true. Today, in part one of this two-part post, we take on an important question many of our clients approach us with:

What is the difference between a trademark and a copyright?

First, we’ll review the one everyone’s somewhat familiar with, trademarks.

What is a trademark?

Trademarks are all about protecting consumers. In operation, they also protect businesses, but the heart of trademark law is about consumers. Trademarks protect consumers because a trademark designates a unique source. When you look at a Coca-Cola can, you know it comes from Coca-Cola. If anyone could use the Coca-Cola logo and that red-and-white packaging, then it wouldn’t mean anything. Consumers would have no idea whether a product they bought was the secret formula the Coca-Cola company has been protecting all these years, or some cheap knock-off. Maybe it was Pepsi in disguise. Thanks to trademark law, when you go out and buy a bottle of Coca-Cola, you know exactly the quality of product you’re getting, good or bad, and you recognize who makes it. Without trademark law, the market would be a really uncertain mess.

Again, trademark law cares most about consumers. For the most part, it seeks to prevent the likelihood of consumer confusion. That’s why we also don’t see Coza-Zola out there on pop cans. And, in another sense, it’s why you can’t go open up the Coca-Cola Brewing Company. Consumers would be confused as to whether there was an affiliation of some kind. In fact, Coca-Cola has reached such fame that it’d be downright problematic if the word Coca-Cola was used by anyone else on any other kind of good . There’s a branch of law called trademark dilution that addresses that. But, cutting to the chase, the touchstone inquiry in a trademark law matter is whether consumers are likely to be confused. It’s why someone can’t open the Sierra Nevada winery tomorrow. It’s why you can’t go sell frozen foods or start a restaurant under a brand name of TGI Fundays. In the first example, it’s not exactly the same sort of good or service, and in the second example, it’s not exactly the same brand name we all know, but it’s all just too close. But, if you wanted to go start making high-tech computer chips under the Sierra Nevada name, you may well be able to do it. Assuming you saw a completely different logo, no green about it, would you think those high-tech computer chips came from the company that brought you that pale ale? That’s essentially what the US Trademark Office is going to be considering when they decide whether to issue a trademark, even when the same name is already registered on a different kind of goods or services. Is the ordinarily prudent consumer likely to be confused?

So, how do you get trademark protection?

Generally, you automatically get a mini sort of trademark protection whenever you open a business and start engaging in commerce. But, you can seek broadband nationwide trademark protection when you start engaging in commerce across state lines (in a brewery’s case, selling beer out of state) or you plan to engage in that sort of commerce within a few years. Again, though, a trademark only protects your business from any subsequent branding uses that would confuse consumers. If a brewery opens up with a name that has a word in common with yours, that might not be a problem, depending on the word. If you’re New Belgium or a consumer familiar with them, we expect Zen Belgium Brewing would feel a lot different than Old Belgium Brewing. Three letters, one word, big differences in overall consumer impression. But, let’s move on.

What is a copyright?

In contrast to trademark law, copyright law is concerned with protecting original works of authorship (that are fixed in a tangible medium of expression, but we’ll keep it simple for now). The deal is, once you create something, you’re in the realm of copyright law. But, the thing you create has to be more than just an idea, it has to be creative, original, and actually expressed. Your brewery’s name in Helvetica font? Not going to cut it. A highly stylized logo design with graphic elements? Now we’re talking. The artwork on your beer cans is probably protectable. That clever description you wrote about your beer? In the realm of copyright law. That beer name you just came up with? Nope, that’s trademark law. That Kickstarter promo video you just put together? Copyright law. Whereas trademark law is worried about consumers being confused about where things come from, copyright law wants to protect art/creativity by keeping creators from being completely ripped off. If you wrote a song and anyone could go cover it, or stick the chorus in their song and make millions of bucks without paying you a dime, we’d be worried you’d stop writing songs. You get the idea.

As you can start to see, trademark law and copyright law concern different things, but there can be some overlap, too. For example, if Pepsi started running holiday ads with pictures of real-life polar bears on its packaging, we’d mostly be in trademark land; polar bears, though usually cartoons, are a Coca-Cola branding thing. If Pepsi went and found last year’s Coca-Cola holiday ad and just had its graphic designers switch every Coca-Cola logo with a Pepsi logo, we’d still have a foot in trademark land but we’d really be in copyright land, too. Exact copying or the creation of something substantially similar, that’s what copyright law is about. And, copyright infringement can be a whole heck of a lot easier to prove than consumer confusion.

How do you get copyright protection?

The great thing about copyright law is that you instantly get nationwide protection. Your kid makes a finger painting? Bang, there’s copyright protection. That email you just sent? It’s actually copyrighted. But, here’s where businesses, breweries, and artists slip up, and it’ll be the main focus of the second part of our post tomorrow. Although copyright protection happens automatically, there are major benefits to taking active steps to protect your copyrighted works. Say you have a killer beer label design. It’s automatically protected by copyright, but does your brewery own the copyright or does it actually belong to the graphic designer you hired to make it? Probably the latter, and that can be a scary thought. And, putting aside the important issue of ownership, if you don’t actively and quickly register your new copyrighted works, which is mega-mega-mega cheap to do, you miss out on the most substantial perks that might well nip improper copying in the bud and, at any rate, make your case so strong that anyone ripping you off would rather pay up front to settle with you than take it into court. More on that tomorrow.

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Kettle and Stone Brewing Changes Name to Avoid Trademark Dispute with Stone Brewing Co.

Here’s a position no 10-month-old brewery wants to be in. Out in Boulder, Colorado, a fledgling brewery initially selected the name Kettle and Stone Brewing, after a three-months-long name-selection process. As the brewery worked hard to brand themselves and build that brand, they received a letter from Escondido, California’s established and well-known Stone Brewing Co. observing that the use of “Kettle and Stone Brewing” was infringing on their trademark. In the letter, Stone gave the option of changing the young brewery’s name or keeping the name but just not expanding their trading territory, and Kettle and Stone didn’t want to fight this one out. They selected a new name, which they’ll announce soon, after they finish jumping through all the (expensive) hoops associated with name changing and settling things out with Stone, including selling off existing inventory branded with the former name.

On the flip side, no established brewery wants to be in the position this scenario put the folks at Stone in. The brewing industry is, after all, built on relationships and many established breweries are reluctant to deliver bad news to their brethren. Nevertheless, when you have a trademark, you’re charged with enforcing it, else you lose the strong rights you’ve established in it. Allowing Kettle and Stone Brewing might allow for further incursions into the Stone brand. One new brewery with the word “Stone” at the end of it might allow for another new brewery to open with the word “Stone” at the beginning of it, and so on. Before long, there could be a dozen breweries operating with the word “Stone” in it, and Stone has lost the branding power it sought and paid for in seeking a trademark registration. Sending a letter isn’t a malicious or petty move by a big brewery, as it frequently can be painted in the news. Still, there are friendly ways to deliver word that you think there may be a trademark conflict, and there are also friendly ways to react to that news. It looks like both breweries here did their best to politely and professionally address the issue.

So, if you’re a new brewery, how can you avoid getting a letter like this during your infancy, while you’re working hardest to establish your brand in your local community and beyond? Here, we can’t know whether Kettle and Stone Brewing conducted a professional clearance search with their lawyer before settling on the name. But, we really recommend doing so, for your brewery name and also for every beer you want to keep on brewing and potentially distributing into other markets. If you make a list of a few names you really like, your lawyer can let you know of any risks there might be in selecting those names. Keep in mind that just because your selected name is somewhat overlapping with another brewery’s, it doesn’t automatically mean you can’t use it. Think Russian River Brewing, Trout River Brewing, Six Rivers Brewery, Bent River Brewing, and so forth. And, the more distinctive of a name you choose—such as one involving a made-up word—the most confident you can be moving forward, both in avoiding getting letters like this and in avoiding having to send ones down the road.

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Protecting Your Brewery’s Tap Handles as Trade Dress

The Alamo v. Texian brewery dispute we reported about on Monday raised interesting issues, including the protectability of tap handle designs. It’s true, tap handles can be eligible for trademark protection, and they’re protected as what’s known as “trade dress.” Just like you can file a federal registration for your brewery’s name or beer names, you can also register certain kinds of your brewery’s trade dress for the utmost in protection. Depending on your tap handle designs, you really might consider doing it.

Trade dress is basically a symbol or device that is capable of carrying meaning, identifying the source or origin of a product. Think about the shape of a bottle of Jack Daniels, for example. There are a gazillion options for liquor bottles, but when we scan the back bar and see that square shape on a shelf, many consumers instantly think Jack Daniels. In fact, there’s been a recent Jack Daniels lawsuit about this very issue.

For breweries, there’s not much variance in bottle shape and size, so things like brewery names, beer names, and logo designs do much more branding work. Yet, we all know that many consumers first encounter a brewery when scanning an array of tap handles. If you’re seeking to register a basic wooden shape, it may not be protectable. The key considerations are whether the design is merely functional and also whether it’s distinctive. For example, if you’ve ever seen Goose Island’s 312 Urban Wheat tap handle, you’ll probably remember it. It’s an old-school hand-held phone receiver. Sure, it’s functional in that it’s easy to grab onto, but no more functional than a carved piece of plastic, metal, or wood. Another way of thinking about functionality is whether competitors would be put at a disadvantage because they can’t use the design feature—not something you can say about phone receivers. Likewise, Redhook’s Audible Ale features a distinctive microphone-styled tap handle. Putting the technicalities of the law aside, you can imagine the confusion if consumers went to a different bar, saw a phone or microphone tap handle behind it, but neither 312 nor Audible were on tap. That’s the sort of thing trademark law is designed to safeguard against.

Ultimately, tap handles are a great way to make a brewery stand out to consumers, also making them a prime candidate for brand protection. If you’re using unique tap handles, or thinking about it, it’s worth having a conversation with your lawyer about whether your design is eligible for trademark protection as registrable trade dress.

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Brewery in a Treehouse, Trademark Stuff, and More: Your Mark and How You Use it Matter

Treehouse

 

We have a new indulgence. It’s watching Treehouse Masters on Animal Planet. It’s like This Old House for the kid in you, watching Pete Nelson and his team (from Fall City, WA, no less) construct crazy-awesome treehouses, decked out with swinging bridges, hidden rooms, even full-on kitchenettes. So, when a recent episode involved sticking a small brewing system in a treehouse, we clearly had to tune in.

The episode involved a brew-loving family in Ohio planning to launch “Treehouse Brewing Company.” The tree house itself was going to be a place to brew up test batches, and they had aims for a bigger brewing system down on land. During the show, someone said they had a Trademark to use the name. Sounded cool, so we launched Google to check out their brews. Google immediately turned up “Tree House Brewing Co.” overlooking the Pioneer Valley in Monson, Massachusetts, but the brewery featured on the show was “Treehouse Brewing Co.”—it overlooked the Mohican Valley in Glenmont, Ohio.

Curiosity inspired a bit more digging. Sure enough, the Massachusetts brewery filed a registration back on February 12, 2013, and the Ohio brewery filed a registration on April 1, 2013. The Ohio brewery tried to oppose the Massachusetts brewery’s registration, but ultimately wasn’t successful. Just this month, the MA-based brewery’s federal trademark registered. The Ohio brewery abandoned its application.

Evidently, as we gleaned from a nice little thread over on Beer Advocate from folks who spotted the issue, “Treehouse” in Ohio had been using the Treehouse name for a long time relating to a pub, but not a brewery. It seems they thought that (1) the long-time pub use gave them superior rights and (2) that use by both breweries wouldn’t be a problem.

There’s a lot that can be said about this whole scenario. We won’t mine it for every lesson, but will observe one thing. The less distinctive your name is, the bigger the risk you run of someone else using it on the same or similar kind of good, or any good for that matter. There’s a reason a Treehouse company can exist to teach you how to code, at the same time a Treehouse foster child agency exists, while Ohio’s Treehouse runs a pub and the guys in Massachusetts run a brewery. But, there’s only one Kleenex, Xerox, Kodak, Reebok.

Naming a brewery or beer is an art in itself, but it’s worth talking to your trademark lawyer about why certain names are just better bets than others.

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