West Sixth Brewing Co. in Lexington, KY, recently provided the perfect example of how not to handle a trademark dispute. Very public complaints of stupidity and corporate bullying quickly shifted into additional claims of defamation and a very public retraction.
Now that the dust has settled, John Cochran, President and co-founder of Terrapin Beer Company, recounted a trademark story of a very different nature in his latest blog post. The title, “Trademarks – too many breweries and too few names?” certainly captures the very likely possibility that such disputes will only become more common.
John starts off by noting what West Sixth should have understood from the very beginning. Putting a can of Magic Hat’s #9 Not So Pale Ale next to West Sixth’s IPA demonstrates it’s not unreasonable to believe they were made by the same company. But it’s his own experience receiving a call about an infringing trademark that provides the most interesting reading.
As recounted in John’s post, several years ago Terrapin brewed a beer it named India Brown Ale. Dogfish Head was already producing a beer – and had the trademark – for one it called Indian Brown Ale. Dogfish Head founder Sam Calagione personally called John and asked Terrapin to stop using the name India Brown Ale.
Sure, John could have taken to social media, calling Sam stupid for thinking any one could confuse “India” and “Indian,” but instead chose a decidedly different tact. He agreed. Terrapin’s beer is now called Hop Karma. You can read the whole post here.
These issues will continue to come up. I received an email out of the blue from a brewer in California asking me to give him a call in reference to the Tuck & Roll Brewing Co. I promptly called and left a message, but never heard back. I’m speculating here, but I’m certain the call came because I inadvertently named one of my homebrews the same as one of their trademarked beers. I’d never heard of either the brewery or the beer.
Tuck & Roll Brewing Co. is the name I created for my homebrew adventures. It’s named after my cats, Tuck and Roll. (Hey, you try coming up with a cool name.) My non-commercial use of the beer name for a five gallon batch of homebrew that never left my house is not a trademark infringement. I suspect I did not receive a call back for precisely that reason once they realized what it was.
It’s a story that demonstrates the times we’re in. Too many breweries? Nah. But the more breweries, the harder it is to come up with new beer names that entirely avoid treading upon names others have already trademarked.
Attorneys (me included) tell trademark owners they have an obligation to actively protect their trademarks by paying attention and addressing potential infringements. Trademarks don’t automatically last forever. Owners must file certain declarations at regular intervals. Failure to file the paperwork, or failure to stop others from infringing on a trademark can result in cancellation.
John’s story demonstrates there are lessons to learn for parties on both sides of the issue.* Initiating discussions do not need to begin with angry letters from attorneys, or venomous responses by infringees while playing the David versus Goliath card. Frankly, in today’s craft beer world I suspect most instances of infringement are entirely unintentional.
Montana has a cool story of trademark cooperation between two western Montana breweries, but I’ll just provide that teaser for now. For the whole scoop, you’ll have to wait for Ryan Newhouse’s upcoming book, Montana Beer: A Guide to Breweries in Big Sky Country.
* Perhaps the most well known cooperative trademark resolution is Avery Brewing Co. and Russian River Brewing Co’s Collaboration Not Litigation Ale.