Let me start by clarifying that I'm not a legal expert. I have no college degree in LLC (Limited Liability Company), Copyright, Trademark, or Patents. I don't own a brewery or a business associated with hospitality. I'm just another consumer who chooses to share his opinion with a global audience, occasionally.
Trademark: noun, a symbol, word, or words legally registered or established by use as representing a company or product. verb, provide with a trademark.
If you don't use it (Trademark) can you lose it?
As a trademark owner, you are not required (by law) to enforce your trademark. But it's advisable to assert ownership whenever possible, to avoid loss of monetary damages. An example of this (failure to assert trademark ownership) was the court case of Abraham v. Alpha Chi Omega.
The case centered on Alpha Chi Omega's assertion that Thomas Kenneth Abraham (manufacturer of decorative fraternity and sorority paddles) had willfully ignored the Greek organizations request, to purchase a license prior to distribution of Abraham's paddles. Unfortunately for the Greek organization, Thomas's business started 30 years prior to the Greek organization's trademark.
In the end the case was decided by the 5th Circuit of Appeals, deciding that monetary damages could not be pursued, but that Mr. Abraham was guilty of infringing on the Greek organization's trademark.
Lagunitas proposes its not about the letters. Instead it's about the arrangement and type of font.
This past month (January 2015) two respected breweries, Sierra Nevada and Lagunitas, engaged in litigation over three letters - IPA. To be clear, the terms of the lawsuit were not over the letters I, P, and A. Rather it was the specific arrangement and typography of those letters.
Filed in Northern California's District Court, the filing was discussed on various forums (e.g. Beeradvocate, Ratebeer, Reddit, etc.) as well as by news organizations like the SF Chronicle.
In their suit, Lagunitas asserted Sierra Nevada's upcoming India Pale Ale Hop Hunter, used a layout which might be in conflict with Lagunita's Brewery's trademark IPA.
|What do you think? Do the two labels confuse you?|
Sierra Nevada responds first by stating the facts
Founded in 1980, Sierra Nevada is a pioneer of craft brewing and sets the standard for quality. Our brand narrative has always been about our passion, innovation and intrepid spirit.
We’ve been making IPAs since 1981. Hop Hunter IPA is the latest product in our portfolio, with the bright Sierra Nevada banner prominently displayed across the top of the design, and the beer style underneath—an IPA in this case—so that beer drinkers know exactly what beer they are reaching for. We have no interest in our products being confused with any other brand.
Debuting in 12-ounce bottles in early 2015, Hop Hunter IPA features oil from wet hops steam distilled directly in the field, minutes after harvest.
Lagunitas responds to public opinion
Lots of mumbles happening here on the internet today… We’d like to clear up a few things because we’re not into all this speculatin’. Bear with us… we’ve had a few more than a few DayTime’s at this point…
This is not about three letters. This is not about IPA. There are thousands of IPAs in the country that use the letters IPA and remain truly unique in flavor, and branding. This is about design. This is about symbols and archetypes and memes. Since our first bottling day in ‘95, we wanted something big and bold and kerned to the way that we thought kerning should be kerned. We didn’t want to use three letters that would stand for something else (India Pale Ale), we wanted them to stand for what was in that very bottle. We wanted something that would be recognized by beer lovers across the country, and we think we are on the way to achieving that-ish. For that reason, we need to protect that work through the ways that work can be protected. We tried talking first, but were rebuffed. It sucks, but we’ve always liked a little uniqueness in a world and industry of incredible creativity, y’know? When our core is challenged, we feel like we need to respond.
Here’s to IPA, however you spell it.
But in less than 24 hours of the court filing, Lagunita's owner Tony McGee (through his Twitter account) posted this.
Tomorrow mornin we'll Drop the Infringement Suit & get back to answering other Questions. I don't think I was wrong for wanting to know cuz…— LagunitasT (@lagunitasT) January 14, 2015
"I had to know the Answer, but the Answer came much sooner than I thought and in a different Court than I thought it would. Can I say thanks?"
Some would argue the case against Sierra Nevada had no merit. While others felt that Lagunitas was justified in filing the suit. If in fact the case is dismissed in San Francisco (where the case was filed), it will conclude one of the fastest reversal's by a privately-owned brewery.
This isn't the first time a brewery has attempted to protect their trademark.
To the uninformed, there have been countless cases of breweries suing one another or businesses over the use of terms, logo, or arrangement.
Magic Hat v. Georgetown Brewery, 2010
Reported June 15th, by Geoff Kaiser (of Seattle Beer News), Magic Hat served a cease & decist over Georgetown Brewery's use of the term pound. Named 9LB Porter, Georgtown Brewery was asked to remove the term LB in light of it's possible association with the pound symbol (aka, #).
Georgetown co-owner Manny Chao responded;
Georgetown co-owner Manny Chao responded;
After much discussion, Alan agreed that we could keep the name but we would have to change the label and use the spelled out word “NINE” in place of the numeric “9” so that there would be less confusion with the brands. We were ok with this and had even come up with a number of different label designs. Where we disagreed, however, is that Alan wants to own the brand name 9LB Porter and then license it back to us for no fee. He argued that this was the only way he could protect his trade name against any future trademark infringement issues with any other brewery. The license he offered to us was free and would not limit our use of the mark (other than not being able to use the numeric “9”).
Rather than pursue a legal response to Magic Hat's assertion of ownership (of the # symbol) the owners (of Georgetown Brewery) retired the name 9LB Porter and settled on Porter with the iconic nine pound sledgehammer in the background.
After much deliberation between Roger and me, and also after discussions with Scott Horrel, owner of the 9LB Hammer, we decided that we could not in good conscience grant someone else ownership of the name 9LB Porter. Scott said it was our decision to make, but Roger and I ultimately felt that the brand does not rightfully belong to us to sign over to some other brewery. We really feel like it belongs to the 9LB Hammer and don’t want some other brewery owning it. In all fairness to Magic Hat and Alan Newman, they did make an effort to compromise. Unfortunately, we just couldn’t agree on the name-ownership issue
Magic Hat v. West Sixth, 2013
In the (May 16th) case of Magic Hat v. West Sixth, the assertion was the use of the number 6 and it's arrangement, when compared to Magic Hat's #9.
A lawsuit filed May 16 in U.S. District Court charged that West Sixth began selling beer, ale and brewpub services in 2012 using color, trademarks and designs "that closely resemble and are confusingly similar" to the designs used by Magic Hat for several years.
Located in Lexington (Kentucky), the brewery asserted their logo did not conform to the trademark (addressed in Magic Hat's lawsuit).
"They're claiming that we intentionally copied their logo, and that has caused them "irreparable harm," enough that they're asking for not only damages but also all our profits up until this point (little do they know that well, as a startup company, there wasn't any, oops!)"
West Sixth logos were created by a professional design firm in Lexington called Cricket Press that has "a long history of fantastic and creative logo designs. ... Our logo contains neither a '#' nor a '9.'"
In the end, the lawsuit was settled out-of-court, with the terms spelled out.
The parties have a mutual interest in assuring that consumers perceive their products as distinct.
The parties have mutually resolved the issues addressed in the lawsuit in a manner that eliminates potential confusion about product origin and resolves the lawsuit in a mutually acceptable way.
To the extent West Sixth in any way represented that Magic Hat filed a frivolous lawsuit, that Magic Hat initiated litigation improperly, that Magic Hat was unresponsive in negotiating a resolution, that Cerveceria Costa Rica was itself involved in the dispute or its resolution, that Magic Hat claimed ownership of the numeral 6, that Magic Hat sued West Sixth after West Sixth had already acceded to its demands, that Magic Hat has no Vermont presence, or that Magic Hat sought to recover for or enjoin West Sixth from truthful public statements, such representations are retracted. West Sixth regrets that it in any manner communicated any inaccuracies, and hereby corrects those errors.
Both Magic Hat and West Sixth have agreed that this joint statement will be the last public communication from either side regarding the resolved dispute.
Each wishes the other good fortune and continued success.
Lost Abbey v. Moylan's Brewery, 2010
Centered around the registered trademark, associated with Lost Abbey's Celtic cross draft handles, Moylan's was pursued with a cease and decist over their similarly designed taphandles.
At this time, we are waiting for a response from Moylan’s Brewing Company and still are open to a resolution that neither weakens nor devalues our Lost Abbey Trademark stylized Celtic Cross Tap Handle. …. The bigger and healthier the Craft Brewing business gets, the harder it is to be unique and distinctive. Intellectual Property is something that all breweries (small and big) need to value. It’s one of the biggest assets we can own.
For their part Moylan's legal representative had this to say.
At the outset, be assured that Moylan's Brewery & Restaurant respect the intellectual property of others and would not intentionally violate valid trademarks of any third party, including Port Brewing LLC. While my client disputes that your clients's design is, in fact, a "Celtic cross", we note that cross designs claimed by your client have been in wide spread use and in the public domain for many years in a wide variety of industries, including within the restaurant and brewing industries. Indeed, I have represented several breweries, brew pubs and restaurant over the year year and I am aware that this type of cross symbol is in wide use in the restaurant and beverage industries.
The case has since been settled between Moylan's and Port Brewing, with both agreeing to (undisclosed) terms. Additionally, the USPTO (United States Patent and Trademark Office) has issued a mark for Lost Abbey's Celtic cross inspired draft handles.
Further examples of trademark enforcement;
- Coronado Brewing v. Elysian Brewing's Idiot Sauvin IPA, July 2012. Suit was settled with Idiot Sauvin name being retired.
- Coronado Brewing v. Maritime Pacific's Islander IPA, April 2013. Suit status is unknown with Maritime Pacific, asked to cease the use of the name outside Seattle.
- Ninkasi v. Yellowstone Valley Brewing Co. "Pints for a Cause", May 2014. Granted Trademark in October 2013, Ninkasi requested the Billings (Montana) brewery revise their charitable name. The brewery has since renamed their event to PintAid
- Avery Brewing v. Russian River Salvation. 2004. Rarely does a brewery dispute end with a positive outcome. But in 2004 owners Adam Avery (Avery Brewing), Natalie Cilurzo (Russian River), and Vinnie Cilurzo (Russian River); settled their name dispute (over Salvation Ale) with a collaboration. The result was a beer released in 2006 called Collaboration Not Litigation Ale, brewed in Boulder (Colorado).
- Full Sail Brewing v. Grey Sail Brewing. 2011. In 2011, Full Sail's Irene Firmat contacts Grey Sail to address the potential confusion over their (Grey Sails) name. As Full Sail owned a number of Trademarks, associated with Full Sail, this was required to avoid losing their Trademark.
Grey Sail retaliated by bring suit against Full Sail. Later, Full Sail and Grey Sail would settle the suit in November (2012) - with Grey Sail appending the words "of Rhode Island" which resolved the dispute.
Reality sucks but you (the customer) should get use to it.
Trademarks are registered for a reason - to protect intellectual property.
When a brewery bring suit against another organization, it's to protect their mark. Sometimes this is to ensure confusion is avoided. Other times legal proceedings are executed, at the advisement of legal council. And sometimes its to defend a trademark when another organization has issued suit against them.
The important thing, you as the consumer must do, is accept this is part of the industries growth. Litigation happens! Ask yourself whether it's justified to boycott a brand, because they defended your right to enjoy a beer. Keep this in mind, before choosing sides; before not only punishing the brewery's ownership, but also those who sweat and ache, to provide you that pint you love so much.
Much like siblings, there will come a time when you can't along. Hopefully it will be concluded with a pint together.
Northwest Beer Guide