I don't do much trademark practice, but I seem to recall that one of the requirements for pleading an actionable trademark infringement suit is that the defendant must have used the allegedly infringing mark "in commerce." Isn't it also the case that the plaintiff must be using the mark in commerce in order to state an actionable claim? If the homebrew store registered the mark for beer 2007 with the mere intent to use it in commerce someday, it seems to me that if they have not yet used the mark for a commercial purpose, i.e., started a brewery by the same name, the store would not be able to enforce the mark against a brewery. The store would really be no better than a cybersquatter or patent troll.
Well, they've trademarked the term for use with 'beer'. The categories seem generally broad, so I think running a homebrew shop (beer supplies) would easily fall under the 'beer' category. I'd say the arguement the they 'directly compete' isn't exactly true and surely someone in Colorado wanting homebrew supplies wouldn't be duped into buying a pint instead - but that may not matter.
Well, it might depend on how courts interpret the scope of a mark's "reach" when the owner has registered the mark in multiple categories. If there is more than one category identified, can there be overlap? Or are the categories presumed to be distinct identifiers? If there can be no overlap between the categories, then beer must mean something other than "retail stores featuring beer and wine making supplies," which is the other category that the homebrew store has identified. So, this brings me back to the "use in commerce" requirement, assuming such requirement exists. If beer means something other than a retail store, then the homebrew store has arguably not used this mark in commerce. Using the mark in commerce is, I believe, a threshold requirement for even bringing a trademark infringement lawsuit.
I found this explaination online -
Copyright infringement requires "substantial similarity" of protected elements, whereas the test for traditional trademark infringement is "confusing similarity." That is, the test for trademark infringement asks whether the ordinary buyer -- not looking for subtle differences or fine details -- would believe both products (or services) came from the same source. The key to trademark infringement is "likelihood of confusion," i.e., whether two marks are sufficiently alike to cause consumer confusion as to their source or origin. Courts consider the following factors in determining likelihood of confusion:
1. Similarity of the conflicting marks;
2. Relatedness or proximity of the two companies;
3. Strength of the senior users mark;
4. Marketing channels used;
5. Degree of care likely to be used by purchasers in selecting the goods;
6. The "second comers" intent in selecting its mark;
7. Evidence of actual confusion;
8. Likelihood of expansion in product lines
Reading the lawyer's letters, you can see how they are trying to show evidence for as many of these factors as possible. Number 8 really muddies the geography argument.
Right, these are the categories that courts traditionally apply when determining whether there was infringement (although I believe they may vary slightly by jurisdiction). But, like I said above, I think it's a threshold requirement that the plaintiff actually use the mark in commerce first. Only after a plaintiff has demonstrated use in commerce would a court proceed to an analysis of the alleged infringement. I could be wrong, but it makes practical sense that it would work this way.
edit: Ok, personal curiosity got the best of me. Looks like "use in commerce" is, in fact, a threshold issue. Here's an excerpt from a case out of the 2nd Circuit Court of Appeals:
Not only are “use,” “in commerce,” and “liklihood of confusion” three distinct elements of a trademark infringement claim, but “use” must be decided as a threshold matter because, while any number of activities may be “in commerce” or create a likelihood of confusion, no such activity is actionable under the Lanham Act absent the “use” of a trademark. 1-800 Contacts, Inc. v. WhenU.com, 414 F.3d at 412.This doesn't meant that the homebrew store doesn't have an actionable infringement claim. Again, it would depend on whether there can be overlap between the registered categories for a given mark.
