Author Topic: These guys need to clean up their act  (Read 12054 times)

Online mtnrockhopper

  • I spend way too much time on the AHA forum
  • ********
  • Posts: 2876
  • Delaware
    • View Profile
Re: These guys need to clean up their act
« Reply #75 on: November 16, 2012, 01:21:59 PM »
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.
 
I found this explaination online -
Quote
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.
Jimmy K

Delmarva United Homebrewers - President by inverse coup when the old president ousted himself.
AHA Member since 2006
BJCP: B0958

Offline theDarkSide

  • Brewmaster General
  • *******
  • Posts: 2073
  • Derry, NH
    • View Profile
Sergeant - BNArmy Member
AHA Member
Seacoast Homebrew Club Member
https://www.facebook.com/SeacoastHomebrewClub
Stephen M.
------------------------------------------------

Offline gsandel

  • Brewer
  • ****
  • Posts: 324
  • www.onbeer.blogspot.com
    • View Profile
    • On Beer
Re: These guys need to clean up their act
« Reply #77 on: November 16, 2012, 01:47:56 PM »
It looks like our friends at Strange Brewing in Denver have made an error in their calculation on that other company in Mass.  I would be the first to admit that they have a good chance losing this one, and it may not hurt them to terribly bad to change names now.  Time to help them continue to be the bigger person and offer them alternative names....after all, a rose by any other name....

Perhaps "Estranged Brewing Company"...but I know you all could do better than this.

Whatcha got?
You wouldn't believe the things I've seen...

Offline morticaixavier

  • Official Poobah of No Life.
  • *
  • Posts: 5670
  • Davis, CA
    • View Profile
    • The Best Artist in the WORLD!!!!!
Re: These guys need to clean up their act
« Reply #78 on: November 16, 2012, 02:03:50 PM »
It looks like our friends at Strange Brewing in Denver have made an error in their calculation on that other company in Mass.  I would be the first to admit that they have a good chance losing this one, and it may not hurt them to terribly bad to change names now.  Time to help them continue to be the bigger person and offer them alternative names....after all, a rose by any other name....

Perhaps "Estranged Brewing Company"...but I know you all could do better than this.

Whatcha got?

given that Strange is also a flavour of quantum particle perhaps another flavour? Naked brewing?
"Creativity is the residue of wasted time" - A. Einstein

Jonathan I Fuller

Offline hopfenundmalz

  • Official Poobah of No Life.
  • *
  • Posts: 4524
  • Milford, MI
    • View Profile
Re: These guys need to clean up their act
« Reply #79 on: November 16, 2012, 02:27:25 PM »
It looks like our friends at Strange Brewing in Denver have made an error in their calculation on that other company in Mass.  I would be the first to admit that they have a good chance losing this one, and it may not hurt them to terribly bad to change names now.  Time to help them continue to be the bigger person and offer them alternative names....after all, a rose by any other name....

Perhaps "Estranged Brewing Company"...but I know you all could do better than this.

Whatcha got?

given that Strange is also a flavour of quantum particle perhaps another flavour? Naked brewing?
Vanilla Large Hadron Brewing. But do a search first, someone at CERN may have that one.
Jeff Rankert
Ann Arbor Brewers Guild, AHA Member, BJCP Certified
Home-brewing, not just a hobby, it is a lifestyle!

Offline Pawtucket Patriot

  • Senior Brewmaster
  • ******
  • Posts: 1353
  • Rebelling against cheap swill since 2005
    • View Profile
    • Bauhaus Brew Labs
Re: These guys need to clean up their act
« Reply #80 on: November 16, 2012, 02:53:41 PM »
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 -
Quote
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.
« Last Edit: November 16, 2012, 03:08:07 PM by Pawtucket Patriot »
Matt Schwandt | Minneapolis, MN
AHA Member

Partial-Mash Pictorial
All-Grain Pictorial

Online mtnrockhopper

  • I spend way too much time on the AHA forum
  • ********
  • Posts: 2876
  • Delaware
    • View Profile
Re: These guys need to clean up their act
« Reply #81 on: November 17, 2012, 10:21:26 AM »
Also, the category is not just 'beer' - it is 'beer; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages' - that last bit easily covers a homebrew shop.
 
Jimmy K

Delmarva United Homebrewers - President by inverse coup when the old president ousted himself.
AHA Member since 2006
BJCP: B0958

Offline Pawtucket Patriot

  • Senior Brewmaster
  • ******
  • Posts: 1353
  • Rebelling against cheap swill since 2005
    • View Profile
    • Bauhaus Brew Labs
These guys need to clean up their act
« Reply #82 on: November 18, 2012, 06:53:51 AM »
Also, the category is not just 'beer' - it is 'beer; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages' - that last bit easily covers a homebrew shop.

Where are you seeing that category description?  Here is the link to the trademark search results for Strange Brew. They have only registered the category "beer" (in addition to the retail category).

http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:1jdi6p.2.1
Matt Schwandt | Minneapolis, MN
AHA Member

Partial-Mash Pictorial
All-Grain Pictorial

Offline anje

  • Assistant Brewer
  • ***
  • Posts: 232
  • Lafayette, IN
    • View Profile
Re: These guys need to clean up their act
« Reply #83 on: November 18, 2012, 09:09:20 AM »
Perhaps "Estranged Brewing Company"...but I know you all could do better than this.

Whatcha got?

given that Strange is also a flavour of quantum particle perhaps another flavour? Naked brewing?
Vanilla Large Hadron Brewing. But do a search first, someone at CERN may have that one.
Baryon Brewery?
<-- microbiologist brewster n00b.

Hops and toothpaste don't mix.

Online mtnrockhopper

  • I spend way too much time on the AHA forum
  • ********
  • Posts: 2876
  • Delaware
    • View Profile
Re: These guys need to clean up their act
« Reply #84 on: November 18, 2012, 12:34:03 PM »
Where are you seeing that category description?  Here is the link to the trademark search results for Strange Brew. They have only registered the category "beer" (in addition to the retail category).

http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:1jdi6p.2.1

Scroll down to the Classification Information section.
http://www.trademarkia.com/strange-brew-78907474.html

Northern Brewer has their mark classified under the same class (and many others).
http://www.trademarkia.com/northern-brewer-85691425.html
 
Let me admit that I don't know what I'm talking about - just trying to figure out the laws.
« Last Edit: November 18, 2012, 12:36:36 PM by mtnrockhopper »
Jimmy K

Delmarva United Homebrewers - President by inverse coup when the old president ousted himself.
AHA Member since 2006
BJCP: B0958

Offline wayne1

  • Cellarman
  • **
  • Posts: 25
    • View Profile
« Last Edit: November 28, 2012, 11:16:02 AM by wayne1 »

Offline snowtiger87

  • Brewer
  • ****
  • Posts: 398
    • View Profile
Re: These guys need to clean up their act
« Reply #86 on: November 28, 2012, 01:48:49 PM »
How about Angry Brewing? Or Angry Lawyer Brewing?
Brewing since 1989 - BJCP National Rank

Fermenting: McChouffe clone, Samiclaus clone
Conditioning: Belgian Tripel, Barrel Aged Baltic Porter - in sherry barrel, Belgain Easter Ale
On tap: CAP, Dortmunder Export, IIPA, Dubbel Chocolate Stout, Wee Heavy, Whiskey barrel aged Wee Heavy, Baltic Porter
Newly Bottled:

Offline Slowbrew

  • Senior Brewmaster
  • ******
  • Posts: 1654
  • The Slowly Losing IT Brewery in Urbandale, IA
    • View Profile
Re: These guys need to clean up their act
« Reply #87 on: November 28, 2012, 01:57:43 PM »
maybe Strangled Brewing Company ?  At least the TLA doesn't change.   ;D

Paul
Where the heck are we going?  And what's with this hand basket?

Online mtnrockhopper

  • I spend way too much time on the AHA forum
  • ********
  • Posts: 2876
  • Delaware
    • View Profile
Re: These guys need to clean up their act
« Reply #88 on: November 28, 2012, 02:22:11 PM »
maybe Strangled Brewing Company ?  At least the TLA doesn't change.   ;D

Paul

They can make that change with a Sharpie!
Jimmy K

Delmarva United Homebrewers - President by inverse coup when the old president ousted himself.
AHA Member since 2006
BJCP: B0958

Offline tcanova

  • Assistant Brewer
  • ***
  • Posts: 181
  • Fayetteville Arkansas
    • View Profile
Re: These guys need to clean up their act
« Reply #89 on: November 28, 2012, 02:24:04 PM »
BetterMan Brewing?  :)
What's the worst that could happen?  Beer?


Wooo Pig Sooiee