By: Mike Jones, Staff Writer
The United States beer industry has reached a significant milestone recently by exceeding the number of breweries in the country since pre-prohibition, and it continues to grow surpassing 3,000 breweries in 2014. [1] Obviously, with an influx of breweries there would be an influx of beers. And with all those beers out there, names will be a premium. The name of a beer should, like any other product, entice the drinker to reach for it in the first place and be easy to remember when they want to recall the libation. So what to do when breweries come up with the same or similar names? Duh. We look to the law.
Trademark protection’s purpose is to best “described as a means of preventing the misleading use of marks to avoid consumer confusion about the source and affiliation of a given product or service.” [2] Essentially trademark protection is used to maintain competition by ensuring the investment into a product is not infringed upon by another similar product. Confusion is a key in finding whether there has been confusion. [3] The Ninth Circuit considers elements such as “strength of the mark… proximity or relatedness to the good… similarity in sight, sound, and meaning… evidence of actual confusion…” along with the intent of the infringer and their market are all taken into consideration in looking to find confusion. [4] Other courts look to the association created between the mark and the goods through prior use or whether the mark was used in a “manner analogous” to the original. [5]
Everyone is thought to be benefited by this. Consumers are free to make rational decisions based on our previous knowledge and judgments of products purchased; assured that we will not be led astray by businesses insidious practices that increase search. Manufacturers will know that their products are being efficiently found without mistake, and “enables producers to reap the benefits of their investment in product quality and business goodwill, thus providing an incentive to strive for quality.” [6]
Beer companies are no strangers to trademark disputes. For the better part of a century, the Czech beer Budvar has been fighting for its right to use the name in Europe with Anheuser-Busch, over the ubiquitous Budweiser. [7] (The Czech beer names comes from the English translation of the city České Budějovice). In 1911, Anheuser-Busch entered into an agreement with European brewery Burgerliches Brauhaus that allowed them to use the Budweiser name across the globe, except in Europe. [8] But looking around in any city in Europe, you will find Budweiser somewhere. These litigious parties have accumulated around forty lawsuits and another forty cases pending worldwide as of September 2003. [9]
While macro-breweries have been arguing since before prohibition, due to the upsurge of local craft and micro breweries within the past few decades, pervasive trademark disputes have not been an issue for the little guys until recently. Second largest microbrewery (based on production) Sierra Nevada from Chico, California decided to flex its muscles against tiny Brooklyn brewpub, Narwhal Brewing Co. in 2011. Narwhal Brewing had been operating under the name since 2010, but never trademarked it. The following year Sierra introduced their (delicious, albeit boozy) Russian imperial stout, Narwhal. [10] Sierra did not want any confusion when their beer hit the market. Narwhal had to succumb to the pressure knowing the uphill battle it faced, along with the costly lawyer fees from our Dear Readers. [11]
In 2013, nearby brewery of Ohio, Great Lakes had to change the name of their Alchemy Hour IPA, because it was too close to Widmer Brothers Alchemy IPA. [12] Interestingly, Widmer Brothers is part of the Craft Brewers Alliance (CBA), a group of Pacific breweries each with minority ownership by none other than Anheuser-Busch.
Utah’s Uinta Brewing Co. decided to change the name of their flagship Hop Notch IPA after entering into the Massachusetts market when Ipswich brewery Notch Brewing feared customers would have “marketplace confusion”. Fortunately, the kind folk out of Utah did so amicably and asked that they merely use up the old packaging they had. Notch brews around 2,000 barrels a year, while Hop Notch (now Hop Nosh) makes up 35% of Uinta’s 66,000 barrels a year. [13]
Trademark infringement does not only have to be between products of the same industry, for example it could be between beer and an energy drink. When Vermont-based brewery Rock Art created their 10% barley wine style VERMONSTER in 2007, owner Matt Nadeau received a cease and desist letter from Hansen Beverage Co., creator of MONSTER energy drink. [14] The letter argued that the name would create obvious confusion and “dilute the distinctive quality” of the MONSTER product.
After a 21 day social network campaign of those small business owners and supporters who quickly analogized this to a proverbial David and Goliath battle, Hansen settled outside of court and established the Morrisville brewery could not enter into the energy drink business. [15]
This is all well and good for lawyers around the world, I suppose. But in an industry that once prided itself on camaraderie, one that has shared each others hops and water during shortages – it feels as though a tingling bit of animosity is occurring. In a world where we swear at people for the most trivial act of cutting us off, there must be a better way to reach common ground. So I will leave you with this feel-good story.
In 2004, before craft beer was the MONSTER it is now, Russian River Brewing Co. of Santa Rosa, CA and Avery Brewing Co. of Boulder, CO were each brewing a respective beer named “Salvation”. Instead of accruing lawyers fees, or going through a tumultuous court battle- they decided to use their wits. The two breweries, well-known for their blended beers, decided to blend the two. They named it “Collaboration Not Litigation”. [16]
I suppose my point can be summed up in the less-than-famous words of Smash Mouth, covering the more-than-famous words of War, “Why can’t we be friends?”
[1] Bart Watson, U.S. Brewery Count Tops 3,000, Brewers Association, July 9, 2014 http://www.brewersassociation.org/insights/us-brewery-count-tops-3000/
[2] Ross Apel, A Path to Acquiring Trademark Rights in the Craft Brewing Industry, 24 Fordham Intell. Prop. Media & Ent. L.J. 1029
[3] Id.
[4] Id. at 1043
[5] Id. at 1054
[6] Internet Trademark Suits and the Demise of “Trademark Use”, 39 U.C. Davis L. Rev. 371, 376
[7] Jitka Smith , BUDWEISER OR BUDWEISER?, 32 J. Marshall L. Rev. 1251
[8] Id. at 1253
[9] WHICH BUD’S FOR YOU? AN EXAMINATION OF THE TRADEMARK DISPUTE BETWEEN ANHEUSER-BUSCH AND BUDEJOVICKY BUDVAR IN THE ENGLISH COURTS 18 Temp. Int’l & Comp. L.J. 479
[10] Eli Rosenberg, Whale War One is over! Narwhal Brewery harpooned by Big Beer, Brooklyn Paper, January 30th, 2013 http://www.brooklynpaper.com/stories/36/5/all_narwhalnowfinback_2012_02_01_bk.html
[11] Id.
[12] Jason Morgan, Great Lakes Brewing Co. rebrands seasonal double IPA after trademark dispute, Craft Brewing Bussiness.com, November 21, 2013 https://www.craftbrewingbusiness.com/news/great-lakes-brewing-co-rebrands-seasonal-double-ipa-trademark-dispute/
[13] Chris Furnari, Uinta Brewing Changes Name of Hop Notch IPA Following Trademark Dispute, Brew Bound, October 31, 2013 http://www.brewbound.com/news/uinta-brewing-changes-name-of-hop-notch-ipa-following-trademark-dispute
[14] “LEAVE LITTLE GUYS ALONE!”: PROTECTING SMALL BUSINESSES FROM OVERLY LITIGIOUS CORPORATIONS AND TRADEMARK INFRINGEMENT SUITS, 19 J. Intell. Prop. L. 117 at 119
[15] Id. at 120
[16] Jonathan Shikes, IN AN ERA OF TRADEMARK BATTLES, WOULD AVERY AND RUSSIAN RIVER STILL COLLABORATE, NOT LITIGATE?, Westword.com February 5, 2014
