Hershey Goes On A Threat Blitz Against A Bunch Of Independent Breweries

from the mine-mine-mine! dept

As far as Techdirt's pages go, Hershey, the company behind all kinds of candy and sweets brands, doesn't come out of the wash clean. The company has been known to lean on IP laws quite aggressively, even absurdly. For instance, it sued a furniture company for having vehicle wraps that looked like a couch being unwrapped like a chocolate bar. Pretty dumb. It also sued Mars for having its own peanut butter chocolate candy, but for which the trade dress was totally different compared with Hershey's Reese's property. Also dumb.

And now the dumb continues as Hershey is apparently going on a threat blitz against several independent beer breweries for trademark infringement. While some of the disputes make some sense from Hershey's perspective, some do not and the overall behavior of the company is one of the bully. We'll start with some of the problematic threats.

Over the past year, the world’s fifth largest chocolate confectioner has sent cease and desist letters to at least eight breweries across the country accusing them of infringing on its trademarks and requesting compensation up to $20,000.

In one case, Hershey is demanding that the owners of Parliament Brewing in Sonoma County, California, stop calling a beer a common catch-phrase that happens to share a name with one of its candy bars.

“We named a beer Whatchamacallit because we had a plumber we loved who was kind of hokey. He would refer to everything as a ‘whatchamacallit.’ I’d never heard the term before,” says co-owner Justin Bosch, who brewed the Whatchamacallit imperial IPA twice, once when Parliament opened in 2019 and again in 2020.

You may be wondering: where is this coming from, given that Hershey doesn't make beer and these seem to be different market categories? Well, the answer to that is likely because Hershey entered into a licensing agreement with Yuengling for its "Hershey's Chocolate Porter". This, perhaps, has led Hershey to believe that it is now tangentially in the beer-making business.

Except that's not really how that works. Combined with the generic nature of the brand name, "Whatchamacallit", there is no public confusion here to worry about. Beer is not candy, in other words, so these two products are in fact playing in different markets, which means in most cases there is no valid trademark complaint to be made.

But because trademark bullying by huge companies works, nearly all of the breweries in question have agreed to change their branding, including Parliament Brewing. That, it appears, wasn't enough for Hershey. The company wants its $20k no matter what.

“I don’t agree there’s an issue here but in the interest of making everybody happy I’ll stop,” he says, paraphrasing his response. “And they came back with, ‘Give us $20,000.’”

More precisely, even though they made no initial mention of money and expressed a wish to “resolve this matter quickly and amicably,” they came back with a letter from their law firm that stated relief could only come from paying a steep price.

It read, “While we appreciate your willingness to cooperate and to cease infringing our client’s intellectual property rights, be advised that entering a formal agreement with Hershey will be necessary to resolve your past unauthorized use of the WHATCHAMACALLIT® trademark and to confirm your understanding going forward.”

I would think the lesson here is that perhaps the math on whether to fight spurious trademark threats from Hershey wasn't so cut and dry. If you're going to have to shell out $20k anyway, well, maybe it would have been better to find a lawyer and fight. After all, again, in nearly all of these cases there is little reason to think the public is actually going to be confused over any of this.

Or, as Bosch, who produces a mere 500 barrels (15,500 gallons) of beer per year, says, “Nobody’s going to mistake a double IPA for a candy bar.”

Depends on how many double IPAs they've already had, I suppose, but it's "moron in a hurry" not "moron who is drunk."

Filed Under: beer, chocolate, trademark
Companies: hershey

Turner Entertainment Forces Name Change Of 'Surrender Dorothy' Beer, Which Isn't Actually Referencing Wizard Of Oz

from the surrender-indeed dept

It won't come as a total surprise that we have covered intellectual property stories involving The Wizard of Oz in the past. Both the book and film are iconic to say the least, so it would perhaps be a bit strange if such issues didn't arise from time to time. That being said, the relevant players here tend to be on the extreme end of the enforcement spectrum, which leads to extreme cases such as Warner Media opposing a trademark filing by a self-proclaimed "wicked witch" for some reason.

The point is that the IP holders for the film tend to see anything remotely resembling a reference to the film as infringement of some kind or another. A recent example of this is Turner Entertainment, part of Warner Media, forcing 7 Locks Brewing to change its name and branding of its beer "Surrender Dorothy."

What was originally known as “Surrender Dorothy” is now simply called “Surrender.” The Wicked Witch won and 7 Locks had to throw in the bar towel. In this case, it was Turner Entertainment that was no friend of Surrender Dorothy. Its lawyers dropped a house on 7 Locks Brewing’s effort to trademark the name of their signature beer. (I think I may have mixed metaphors there.)

“Basically, Turner owns the rights to ‘The Wizard of Oz,’ ” said Keith Beutel, co-founder of 7 Locks. “They claimed that we were using the term ‘Surrender Dorothy’ and they didn’t want any confusion with their branding.”

It wasn’t just the name. It was the design on the can, too, which featured a curvy yellow thoroughfare that the media giant insisted was too similar to the “Yellow Brick Road.”

So, "Surrender Dorothy," a yellow road, and also on the label that road leads to a castle or palace with several large spires. I know what you're thinking: those sure sound like references to Oz. But, no, it's actually a reference to a famous story and prank that occurred in the DC area, where 7 Locks is located. The castle spires aren't Oz; they're the Mormon temple. The yellow road isn't the yellow brick road; it's the Beltway. And the Dorothy? Well, that was the prank I mentioned.

A refresher for anyone unfamiliar with how the beer got its name: For years starting in the 1970s, graffiti would show up on a railway bridge over the Capital Beltway just west of Georgia Avenue. As motorists drove around the Outer Loop, the Oz-like spires of the Mormon temple looming ahead, they’d see “Surrender Dorothy.” It was a bit of whimsy, refreshed whenever it was painted over by CSX, the railroad whose trains use the bridge.

I’ve never been able to find out who first daubed the bridge with that expression, but I did find their inspiration: Catholic schoolgirls who had earlier created a temporary “Surrender Dorothy” message by stuffing wadded-up newspaper in the chain-link fence of a nearby vehicle bridge.

So there's a semblance of a reference to Dorothy from Oz, but it's a 2nd degree reference at best. It's not the brewery's fault that the temple and beltway look so much like Oz that they served as this inspiration. And that's not actually the point of 7 Locks' label. The point is in homage to a local legend of sorts.

But, because trademark bullying works, and even though some commentators believe the brewery could prevail if it fought, the "Surrender Dorothy" branding has been, well, surrendered. But not without a bit of a middle finger on the brewery's new label.

So the new beer is called simply Surrender. The image on the can — unveiled early in the summer — still features the Mormon temple, but the Beltway is gray, not yellow. And the graffito on the bridge over it is being painted over by a man in a hard hat. All you can see are the letters “DORO . . .”

What a great victory for Warner Media...

Filed Under: beer, surrender dorothy, trademark, wizard of oz
Companies: 7 locks, turner entertainment, warner media

Makers Of 'Peaky Blinders' Show Fail To Get Injunction Against Distillery For 'Peaky Blinders' Whiskey

from the cheers! dept

When you cover as many trademark disputes centered around the alcohol industry as I have, you really do start to realize just how many other industries don't seem to understand that their products are not the same as adult libations. Alcohol, you see, is not the same as a major metropolitan city. Alcohol is also not the same thing as fruit juice. Beer, as well, is not the same thing as wine. Alcohol is also not the same thing as a famous movie franchise.

And, as the producers of the hit show Peaky Blinders are hopefully about to learn, alcohol is also not the same thing as a television show about a famous historical gang. See, Sadler's Brewhouse in the UK recently applied for a trademark on the many "Peaky Blinders" alcoholic drinks it sells in the United States. The production company for Peaky Blinders the Netflix show caught wind of this and promptly sued for trademark infringement, going so far as to ask the court for an injunction to prevent Sadler's from selling its products.

Mandabach sued Sadler’s for trademark infringement in November, alleging Sadler’s “Peaky Blinder” whiskey, gin, rum, and dark beer was likely to cause confusion with its show about the 19th century Birmingham, U.K., gang after which the show is named.

Sadler’s applied for a U.S. trademark for the name in 2017. Mandabach sent it a warning letter in 2018, and Sadler’s began selling the drinks in the U.S. through co-defendants Halewood Wines & Spirits Inc and The Winebow Group LLC in 2020.

Now, before we get to how the court ruled on the injunction, there are a couple of things you have to understand about all of this. Peaky Blinders is not a fictional gang created by the show's producers. They were a very real street gang that operated in England until the early 1900s. Sadler's former owner was a descendent of a Peaky Blinder gang member and the gang used to go to the brewery's venues on the regular as a result. It's for those reasons that the company decided on using Peaky Blinders branding.

Now, the show producers claimed a number of things in its lawsuit and request for an injunction. It claimed that the trademark it held for the show was not at all descriptive, that it had acquired secondary meaning, and that there was real customer confusion in the public due to Sadler's use. The court denied the injunction and the reasoning it did so should give the producers pause on whether to keep this lawsuit going in the first place.

Caryn Mandabach Productions Ltd didn’t show that it owned a protectable trademark in the name, that Sadler’s Brewhouse Ltd’s products were likely to cause confusion, or that the alleged confusion caused it irreparable harm, U.S. District Judge Consuelo Marshall said Wednesday, rejecting the production company’s bid for a preliminary injunction.

Marshall found Wednesday that Mandabach didn’t prove it had a protectable interest in its unregistered trademarks, in part because its use of “Peaky Blinders” is “likely descriptive or suggestive of a television show regarding a group of persons named the Peaky Blinders.” Mandabach also didn’t make the “clear showing” required for a preliminary injunction that Sadler’s was likely to confuse consumers. Mandabach also wouldn’t be irreparably harmed without an injunction, Marshall said, noting that it waited over two years to sue and nearly three years to request an injunction after sending Sadler’s the warning letter.

The full ruling on the denied injunction is embedded below. If you want a sense of why Mandabach maybe should just drop this whole thing, it's worth a read. Injunction rulings have lower bars than would be considered in a motion to dismiss argument, should Sadler's seek one, but the analysis is still fairly damning. In a nod back to the opening paragraph of this post, for instance, consider the court's view on whether these two companies operate in the same marketplace.

“Related goods are generally more likely than unrelated goods to confuse the public as to the producers of the goods.” Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1150 (9th Cir. 2011). Here, Plaintiff’s good is a television show whereas Defendants’ goods are whiskey. Therefore, the proximity of the goods factor does not favor finding a likelihood of confusion.

Most of the tests for trademark infringement and for granting an injunction follow a similar track.

Frankly, a great deal of this hinges on the show's own decision to use the name of a historically famous real life street gang as its show name. The idea that this slice of history could be locked up by a television show and prohibit its use in a totally unrelated market flies in the face of the purpose of trademark law.

Filed Under: beer, injunction, likelihood of confusion, peaky blinders, trademark, tv shows
Companies: mandabach, sadler brewhouse

Craft Brewing Trade Mag Argues Beer Is The Most IP Product Ever, Ignores History Of The Industry

from the calling-all-lawyers dept

And now, we shall talk about one of life's great pleasures: beer. This nectar of the gods has been something of a focus of mine, particularly given the explosion of the craft brewing industry and how that explosion has created an ever-increasing trademark apocalypse over the past decade. It is important context for the purposes of this post that you understand that the craft brewing industry, before it exploded but was steadily growing, had for years operated under a congenial and fraternal practice when it came to all things intellectual property. Everything from relaxed attitudes on trademarks, to an artistic bent when it came to beer labels, up to and including the regular willingness of industry rivals to regularly collaborate on specific concoctions: this was the basic theme of the industry up until the past decade or so. It was, frankly, one of the things that made craft beer so popular and fun.

With big business, however, came corporatized mentalities. Suddenly, once small craft breweries doubled in size or more. Legal teams were hired and there was a rush to trademark all kinds of creative names. The label art, once the fun hallmark of the industry, became a wing of the marketing department. This is how, now in 2020, you get trade publications like Craft Brewing Business arguing that beer is one of the most all-encompassing products when it comes to intellectual property.

To be fair, given the current climate, you can see some of the logic in the following:

Beer aficionados worldwide can easily describe the nuances of pilsners, IPAs, milkstouts, and lagers. More hazy is the fact that beer is a product that touches upon nearly every type of intellectual property. Indeed, the names of breweries and beers are subject to trademark; label art and packaging are works of authorship covered by copyright law; and hops—that critical component of a beer’s aroma and flavor—can be patented.

It's a fair point, certainly. Though, left entirely unsaid in the entire post is whether any of this is a good thing. Instead, the post goes on to explore in some detail just how all things IP can be applied to brewers' products. Even when it gets absurd, the post hand-waives away any concerns. We'll start with the patenting of hop varieties.

The short answer to this seemingly straightforward query is the plant patent. By statute in the United States, whoever:

” invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, . . . may obtain a patent therefor. . . .”

Hops can be among these new plant varietals, and as part of the bargain for inventing a novel strain, brewing innovators release their work into the public domain after 20 years. But until that two-decade window closes, the creator and owner of a plant patent gets to cash in exclusively on the agricultural brainchild.

A couple of things here. First, the idea that mild differences in varieties of particular plants should get patents doesn't strike me as a great thing. And, given the longstanding practice of patent-extending by making minor tweaks to the biology of the plants and then re-patenting them, I can't imagine why the craft beer industry, once rife with creative brews, would want any of this protectionism.

Second, as the post mentions, though barely, patent holders for even some of the most well-known hop varieties regularly fail to hold up their end of the patent deal with the public.

Of note, if a patent owner does not adequately teach the world (translation: the public domain) about the plant at issue and how to make it upon the patent’s expiration, the patent’s owner—by effectively keeping the invention secret and taking advantage of the 20-year monopoly bestowed by patent law—has not kept up its side of the bargain. This unfortunately seems to be the case with respect to the Citra hops patent, which does not offer much in the way of substantive direction for replication of this varietal, meaning it may not be enabled and, therefore, subject to challenge.

Great.

When it comes to trademarks, the post does a decent job of articulating how trademarks are chiefly meant to avoid customer confusion. While true, the industry survived for decades without putting any real emphasis on trademarks. That seems worth mentioning. Instead, the post goes on to use an absolutely awful example of trademarks being used to protect an industry brand.

To be clear, marketplace confusion is what trademarks are meant to prevent. That being said, if a shopper strolls down a grocery aisle, peruses the beer selection, and confuses a bottle of Stone IPA with and a Keystone Light by virtue of packaging—and advertisement—encouraging drinkers to “grab a Stone,” Molson Coors Beverage Company (owner of the Keystone brand) may be infringing upon Stone IPA’s trademark. If this scenario sounds familiar, that is because this very dispute between Stone Brewing and Molson Coors is scheduled for an October trial in federal court.

Here again we have errors of omission. While Stone is indeed in a fight with Molson Coors as described above, the article fails to point out that Stone Brewing, in service of getting a huge judgement in this court case, has turned on a ton of other craft breweries with which they used to coexist peacefully, and has started bullying them with its trademarks as well. And, what's more, Stone went on to piss and moan when the wider public thought it was behaving like bullying dickheads in all of this. This seems like exactly the sort of thing craft breweries could learn from, yet it's all totally absent from the post.

And, while the post goes on to ignore the question of copyright in label art, the most glaring absence of information has to do with the history of the industry. Again, this is an industry that exploded before everyone decided to have corporatized legal firms challenging every trademark application that's even close to infringement. If there is a lesson in the last decade for the craft beer industry, it's that it should have striven really hard to retain its roots when it became big business.

And the real shame of it is that new brewers reading trade magazines like Craft Brewing Business may not know, and now won't learn, of those far better times.

Filed Under: beer, craft beer, trademarks

AB InBev And Patagonia Trademark Dispute Will Proceed To Trial

from the busch-league dept

A little over a year ago, we discussed a lawsuit brought by Patagonia, famed West Coast clothier for all things outdoor lifestyle, against AB/InBev, famed macro-brewer. At issue was AB/InBev's decision to sell a Patagonia-branded beer line at pop up stores at ski resorts, the exact place where Patagonia clothing is quite popular. Within those stores, AB/InBev also sold Patagonia-branded clothing. Coupled with the beer maker's decision to do absolutely nothing with its "Patagonia" trademark for six years, you can see why Patagonia sought to invalidate AB/InBev's trademark. It's also understandable that the court ruled against AB/InBev's attempt to have the suit tossed last summer, with the absurd claim that the Patagonia brand for clothing isn't actually well-known at all. In the meantime, Patagonia asserted in filings that AB/InBev actually defrauded the USPTO when it got its trademark in the first place.

Which brings us to the present, where the beer maker attempted to get at least some of the claims against it dismissed, arguing that the claims about defrauding the USPTO were simple clerical errors and that Patagonia had failed to protect its mark for too long. The court ruled in favor of Patagonia, meaning this will now go to trial. We'll start with the claims of Patagonia failing to protect its mark, which center around AB/InBev's registration for trademark indicating the company had been using "Patagonia" continually for five years.

Argentinian brewer Warsteiner Importers Agency Inc. first filed the intent-to-use application for a Patagonia beer trademark in 2006, based on its intent to sell its beer in the U.S., the court said. It filed several extension requests, including one in 2011 that said it still intended to use the mark, but didn’t intend to import its beer. Anheuser-Busch asked it to file one more extension and then bought the application in March 2012. It filed a statement of use, claiming it began using the trademark in July 2012 and received the trademark registration later that year.

Patagonia learned of the trademark in 2013 but believed that Anheuser-Busch had legitimate rights, according to the opinion. But shortly after the beermaker launched Patagonia beer at a pop-up stores at ski resorts in 2019, with the beer and promotional apparel featuring a mountain logo that allegedly infringed Patagonia’s trademarks, Patagonia sued.

In other words, the company picked up on a long-delayed application by another beer maker, bought the application rights to the trademark, and then claimed it had been using the mark for five years, which it had not. When Patagonia learned of the application, it thought AB/InBev's application was legit, but learned after the pop-up stores began selling clothing that it was not. Patagonia, to add to all of this, sells some beer under its mark as well. Trademark law includes "anti-trafficking" rules that prevent companies from buying applications like this prior to the mark in question actually being used in commerce. The rules for this are complicated, but the claims Patagonia is making as to how AB/InBev tried to get around these rules most certainly are not.

Patagoina also argued that the beermaker fraudulently had Warsteiner change the date on the document assigning the trademark to suggest compliance with the anti-trafficking rule. Anheuser Busch said the change was to correct an error.

The court rejected Anheuser-Busch’s bid for a judgment that its Patagonia trademark had become incontestable, finding it hadn’t been used continuously for five years as required. Incontestable marks can only be challenged if they became generic, abandoned for nonuse, or acquired by fraud.

Anheuser- Busch also still faces allegations of fraud through its alleged violation of the anti-trafficking rule and false claims of continuous use.

In addition to all of the above, the court also decided that the branding AB/InBev decided to use was similar enough that a jury should decide if there was true trademark infringement here.

What should perhaps be most striking in all of this is just how callous AB/InBev appears to be when it comes to the trademark rights of others, especially compared with how protective and expansionist the company is of its own trademarks. It is quite silly to expect virtue and consistency from a multi-national corporation, of course, but the hypocrisy is still quite glaring.

Filed Under: beer, clothing, patagonia, trademark, uspto
Companies: ab/inbev, inbev, patagonia

Aldi, Brewdog Brand War Ends In The Best Possible Way: Collaboration

from the take-note-congress dept

The world may well feel like a terrible place to you right now. A pandemic is sweeping much of the world, with leaders from many countries playing the ostrich, or else treating the victims as though they were mere idiots. Racial tensions and brutal police practices are on full display, with the most surprising aspects being that they continue even as the world is shining a spotlight on the offenders. World leadership appears to be in full retreat, leaving space for truly nefarious actors to shoulder their way into ever more troubling activities.

Just last week, the White Sox beat the Cubs in two out of three. These are dark, dark times indeed.

But, hark, all ye who may despair, for I bring good tidings. Mere days ago, we talked about a brand war that appeared to be brewing (heh) between grocerer Aldi and Brewdog, a self-styled "punk brewery." It started when Brewdog released a "Punk IPA", fully in line with its branding motif. Aldi then released a beer called "Anti-Establishment IPA", in a similar looking blue can. This led to Brewdog suggesting on Twitter that maybe it should release a "Yaldi" beer. Aldi said "ALD IPA" would be a better name... and Brewdog agreed, rebranding the beer under that name.

Notably absent from the whole episode were cease and desist notices from either side, lawyers filing trademark lawsuits, or any legal machinations of any kind. Instead, there was much good-natured ribbing and a fair amount of congenial creativity at play. In the end, Aldi's social media accounts had a laugh at Brewdog taking its suggestion, and even mentioned it might have to save some aisle space for the newly branded beer.

Which, in conclusion, appears to be happening.

Were you like me, where some part of your professional life is spent writing stories about ever more stupid trademark disputes and far too may of them ending in even more stupid litigation, you would realize just how satisfying this is. Compared with pointless protectionism, this is such good business on so many levels.

Lawyer fees are completely avoided. Trademarks for all sides are still fine. Just fine. And, most importantly, an entirely new business arrangement, one which will make some good money judging by the response to this news, is entered into by both sides. Everyone is fine, everyone is happy, everyone makes money.

And everyone has at least a little bit of fun with all of this on top of it. Bravo all the way around.

Filed Under: ald ipa, beer, collaboration, friendly dispute, punk ipa, trademark, yaldi
Companies: alti, brewdog

Brew Dog, Aldi Get Into Brand Battle With Good Nature, Not Cease And Desists

from the yaldi dept

It's been quite a brief but impactful journey for Brewdog, a self-styled "punk brewery." The history starts with Brewdog first going after a pub in the UK over trademarks, getting a fair amount of backlash for it, and then having Brewdog ownership not only rescinding all the threats, but inviting the pub to collaborate on a gin together. As part of that whole episode, Brewdog promised to "do better" when it came to IP enforcement and even covered the pub's legal costs. It was a nice story.

One which the brewery has by all accounts lived up to. Subsequent stories about them here dealt only with a strange attempt by the Estate of Elvis Presley trying to stop the brewery from trademarking a craft brew entitled Elvis Juice. Brewdog won that one, by the way.

And now again Brewdog is making news for itself by poking at a larger entity, but has once again managed to do it in such a human and awesome way that Aldi of all companies appears to be a willing participant in the fun. The whole thing started with Brewdog putting out an on-brand IPA beer entitled "Punk IPA." From there, Brendan Palfreyman, an IP attorney that specifically focuses on the craft brew industry and is a fantastic follow on Twitter, picks up the back and forth when Aldi decided to poke the Brewdog.

Yeah, this is actually happening. Consider the back and forth here for a moment. Brewdog makes a Punk IPA in a blue can. Aldi decides to release a Establishment IPA in a blue can, one that harkens specifically to Brewdog's. Rather than go full IP lawyer-rage, Brewdog takes the whole thing in stride and announces the release of an IPA called Yaldi, which mimicks Aldi's branding. The whole thing is enough to make an IP maximilist keel over and die from an embolism.

And, yet, no trademark threats. The only mention of a cease and desist comes from a third party that has a Yaldi brand beer. Aldi never gets in on the threats. Instead, the game continues.

Take notice: this is a major brand basically showing a brewery a better way to create an homage to its own brand. IP maximilists they are not. And, because the folks at Brewdog are apparently made of that old craft brewing DNA, where you treat this business with equal amounts reverence and irreverence, all while maintaining a sense of humor... they did as Aldi requested.

Aldi's response? It said it's looking forward to getting a case of ALD IPA and might even clear some aisle space for it. In other words, there might actually end up being a lucrative business deal coming out of this whole thing.

And what's really striking in all of this is just how easily this whole thing could have gone ass up if anyone on either side had decided to play IP fun-police rather than act so human and cool about this whole thing. Brewdog could have gotten pissed at an obvious knockoff beer at Aldi and tried to threaten the grocery chain. It didn't. Aldi could have decided that Brewdog's retort was a bridge too far and tried to threaten the brewery. It didn't.

Instead, we might have a business deal in the works. One wonders if this will get the rest of the craft beer industry to pay the slightest bit of attention so it can go back to its old, better ways.

Filed Under: ald ipa, beer, bullying, establishment, non-bullying, punk, trademark, yaldi
Companies: aldi, brewdog

Stone Brewing, One-Time Battlers Of 'Big Beer', Out Here Trying To Cancel Non-Confusing Trademarks

from the stone-cold dept

In the past few years, as the craft brewing industry exploded, it became something of a regular thing for us to write about one craft beer trademark dispute or another. The idea is that as the industry has grown, it's become corporatized. The once congenial atmosphere of the industry, one which saw breweries heavily borrow from one another, or skirt the line of potential confusion, devolved into suited lawyers arguing about beer brands. And if that doesn't make you sad, you simply have no soul.

Stone Brewing was once one of the smaller craft breweries out there and built a reputation for itself for taking on "big beer." That stance morphed in 2018 into a lawsuit against MillerCoors over the latter's rebranding of Keystone beer into "Stone" on its can labels.

In March 2020, a federal court rejected both sides’ motions for summary judgment and the case will now move to trial in October 2020. Stone Brewing is seeking to recover $1 billion in damages in regard to infringing sales. Coincidentally, in the lawsuit, MillerCoors argues that the San Diego-based craft brewery’s trademark of the word “stone” f is “conceptually weak because at least 10 other craft breweries actively use the word ‘Stone’ in their name."

And that pushback from MillerCoors appears to have been the catalyst for Stone morphing, just like its industry has, into one of corporate lawyering and aggressive trademark enforcement. Since March, it appears that Stone has gone hunting for other breweries that have been using the word "stone" in their names and, in several cases, is attempting to have that trademark cancelled.

First reported by Kindsey Bernhard of Kentucky Sports Radio, who uncovered a series of tweets stemming from Patrick Fannin of Dreaming Creek Brewery in Richmond, KY, Fannin explains that Stone Brewing has issued a trademark cancellation request against Sawstone Brewing for their use of the word “stone” in the brewery’s name. Stone Brewing first filed for their mark of the word in 1997.

Upon further investigation of the US Patent and Trademark Office, the Sawstone Brewing team discovered that Stone Brewing has also issued similar trademark cancellation requests in approximately 100 instances this year where entities have used the word “stone” or “bastard” in either their alcohol-related business or products. Stone Brewing is also the creator and trademark holder for Arrogant Bastard Ales.

And so here we are. The once-little-guy brewery that took on MillerCoors, and in some circles was applauded as a David taking on Goliath, is now just a Junior Goliath taking swats at all kinds of Davids.

And, as should be obvious, this sort of shotgun approach to trademark cancellation is complete horseshit. If Stone were so concerned and injured by these uses of the word "stone" by other breweries, or if there were any actual customer confusion to have here, why now? Where is the evidence of harm and confusion? If it exists, why hasn't Stone sued before?

Or, to take the least charitable view, is Stone simply going after its fellow craft breweries to bolster its seven-figure claims lawsuit against MillerCoors?

Filed Under: beer, brewing, stone, trademark
Companies: stone brewing

Say It With Me Now, Australia: Beer And Wine Are Not The Same Thing, Not Even For Trademarks

from the not-like-the-other dept

While I've done a fair share of posts here on the topic of trademarks and the alcohol industries, one of the most frustrating sub-types for those posts is the sort where the dispute exists between one wine maker and one brewery. There appears to be some misconception that alcohol is one big market or industry for the purposes of trademark. While it is true that far too few countries explicitly recognize that wine and beer are different markets in their trademark laws, most of the countries do still have customer confusion as a key test for infringement. And, I feel it's safe to say, the general public can tell the difference between beer and wine, and typically know enough about each's crafters to tell their branding apart.

Now the general public in Australia is facing this test in a way, with a large liquor chain trying to oppose the trademark application for a craft beer gift service over a wine trademark it holds, but doesn't seem to be using.

The Beer Drop was officially launched in October 2019, with founder Evan Reitano filing to register its trademark in June 2019.

In January this year Coles opposed the trademark, saying it was “contrary to law” as it had substantially identical or deceptively similar trademarks – in this case, ‘Wine Drop’ which is currently not in use, and whose web page redirects to First Choice.

“Our Wine Drop subscription service was a popular service for our First Choice customers and the www.winedrop.com.au website currently redirects customers to the First Choice Liquor webpage,” a Coles representative told Brews News.

This appears to be as close to an admission that a trademark is no longer in use as one could hope for. "Was" a popular service. The website redirects to a different branded page. And that's all before we get to the simple fact that wine and beer are not the same thing. Add to that that the word "drop" isn't particularly source identifying and you begin to wonder how there's a case to be made by Coles at all. And then we can add to all of that my suspicion that the Australian public can probably discern between a big retailer and a startup craft beer gift service. With that, this all begins to look silly.

It looks as though Beer Drop will be focusing on Coles' failure to use the trademark, however, rather than beer and wine being distinct markets.

Reitano undertook a small business course before launching The Beer Drop and said it was invaluable to his IP experience so far, but what really stung was the references to ‘bad faith’”, he said.

“I read over it and I laughed it off at first, I had never heard of the Wine Drop, the first thing I did was jump onto Google. Being a Coles Liquor business you’d think it would be in the top one or two search hits which it wasn’t, and I can’t find any trace of it. It’s strange because they’ve said in their opposition that they’ve built a reputation with that brand, it feels like they expected me to read it and say shit, it’s Coles Liquor, let’s back off."

Part of the reason for that may have been that Reitano worked for another Coles liquor brand in his past. Some folks have claimed that, since he worked for a Coles brand, he must have known about the Wine Drop trademark. That is obviously silly. Expecting a line employee to know about every trademark a company is no longer using is insane. And it's also entirely besides the point because, again, this all ultimately boils down to the potential for customer confusion and here there is none.

Filed Under: australia, beer, beer drop, evan reitano, trademark, wine, wine drop
Companies: coles liquor