Further Update on Anchor Steam v. City Steam

As I previously blogged, the lawsuit filed by Anchor Steam against City Steam was recently settled. See: http://trademarkbar.blogspot.com/2014/08/anchor-steam-vs-city-steam-update.html. However, since the settlement agreement was not filed with the Court, it was unclear what the terms of settlement were. 

We now know what two of those terms were:
(i) City Steam agreed to withdraw its trademark application for CITY STEAM; and
(ii) Anchor Steam agreed to withdraw its Opposition to City Steam's application.

This information was revealed in a joint motion that the parties filed this week with the TTAB. See: http://ttabvue.uspto.gov/ttabvue/v?pno=91209590&pty=OPP&eno=10

Interestingly, in the motion, the parties requested that the Board terminate the Opposition proceeding, but they did not specify whether the Opposition should be dismissed with or without prejudice, which leaves open the possibility for a future dispute. See TBMP 605.03(a) ("If the proceeding is to be dismissed, the stipulation should specify whether the dismissal is to be with prejudice or without prejudice. If no specification is made, the Board, in its action dismissing the proceeding, will simply state that the proceeding is being dismissed “in accordance with the agreement of the parties.” However, if the agreement itself also fails to indicate whether the dismissal is to be with or without prejudice, at some later time a dispute may arise between the parties as to whether they intended the dismissal to be with or without prejudice.")

FLOWER POWER v. FLOWER CHILD

There have been a number of craft beer trademark battles recently, but this may be the first involving two hippie-inspired names. The dispute features a New York brewery, Ithaca Beer Company, against a Massachusetts brewery, Cambridge Brewing Company.

Ithaca Beer Company has been selling its "Flower Power" IPA since 2000, and obtained a federal registration for the mark in October 2010. [Full disclosure: I'm a big fan of this beer.]


Cambridge Brewing Company has been selling its "Flower Child" IPA since September 2010, and filed an application to register this mark in January 2014.


The FLOWER CHILD application was recently approved by the Trademark Office and published for opposition. On September 17, 2014, Ithaca Beer Company opposed the application, alleging that there is a likelihood of confusion between the two marks. (See: http://ttabvue.uspto.gov/ttabvue/v?pno=91218388&pty=OPP) While the Notice of Opposition features the usual arguments concerning the similarities between the marks and the goods, it also has some interesting allegations about Cambridge Brewing Company's bad faith in adopting its mark. Specifically, Ithaca alleges that:

• "[I]n or prior to 2010, a Cambridge Brewing Co. brewer contacted an Ithaca Beer Co. brewer with a question about how FLOWER POWER IPA was made. The Ithaca Beer Co. brewer provided the Cambridge Brewing Co. brewer with the recipe for FLOWER POWER IPA, which the Cambridge Brewing Co. brewer used as inspiration for its FLOWER CHILD IPA.

• An interview of a former Cambridge Brewing Co. brewer, which was published on www.caskandculture.com, states that the “name ‘Flower Child’ stands as a tongue-in-cheek nod to the recipe that helped it blossom,” i.e., FLOWER POWER.

• Likewise, a September 22, 2010 post by Cambridge Brewing Co. on its Facebook page states that FLOWER CHILD IPA is an “homage” to Ithaca Brewing Co.’s FLOWER POWER.

• Cambridge Brewing Co. named its beer FLOWER CHILD specifically in reference to Ithaca Beer Co.’s FLOWER POWER.

• Cambridge Brewing Co. named its beer FLOWER CHILD in order to play off and trade on the success of Ithaca Beer Co.’s FLOWER POWER beer."

Based on an initial review of the allegations, it looks like it will be an uphill battle for Cambridge Brewing Co., especially in light of the TTAB's recent decision in the PURPLE HAZE v. SUNNY HAZY case. (See: http://thettablog.blogspot.com/2014/09/sunny-haze-confusable-with-purple-haze.html)

Anchor Steam vs. City Steam Update

The lawsuit filed by Anchor Steam against City Steam has apparently been settled. (For background on the dispute, see: http://trademarkbar.blogspot.com/2014/02/anchor-steam-vs-city-steam-can-generic.html)

The following entry was uploaded to Pacer today:

"ORDER. A settlement conference was held on August 27, 2014. The case is settled. The parties will file the appropriate papers within 30 days. Signed by Judge Thomas P. Smith on August 28, 2014.(Slitt, M.) (Entered: 08/28/2014)"

I'm glad to see that the parties were able to reach an amicable resolution. It will be interesting to see what, if any, limitations on the use of the "Steam" term City Steam agreed to.

Colorado Breweries Battle Over ELEVATION Trademark

The latest craft beer trademark dispute comes from Colorado, where Elevation Beer Company ("EBC") and Renegade Brewing Company are fighting over the ELEVATION trademark.







The dispute began in early April when EBC sent Renegade a cease and desist letter claiming that Renegade's use of the name "Elevation" in connection with beer--Renegade has a beer named "Elevation Triple IPA" (see: http://renegadebrewing.com/brews/elevation-ipa/)--infringed its rights in the ELEVATION mark. EBC noted in the letter that it has a trademark registration for the mark ELEVATION BEER COMPANY, and that it began using its mark prior to the date on which Renegade first started using the "Elevation" term.


Renegade Files Cancellation Action:
Renegade refused to accede to EBC's demands, and instead decided to go on the offensive. In late April, it filed an action before the Trademark Office to cancel EBC's registration. As grounds for cancellation, Renegade alleges that EBC committed fraud in the procurement of its trademark registration in two ways:

(1) By falsely declaring that "no other person...has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely...to cause confusion..."  In other words, Renegade claims that EBC falsely alleged that it was the exclusive user of the ELEVATION mark in connection with beer. As support for this allegation, Renegade cites various other breweries that were using the "Elevation" term in connection with beer prior to the filing date of EBC's application, including Elevation66 Brewing Company (ELEVATION66), Beach Chalet Brewery (ELEVATION ZERO ESB), Full Sail Brewing Company (FULL SAIL ELEVATION), and Breckenridge Brewery (BRECKENRIDGE ELEVATION). [NOTE: this will likely be an uphill battle. See: http://thettablog.blogspot.com/2011/01/ttab-refuses-to-cancel-atls-baddest.html and http://thettablog.blogspot.com/2013/08/ttab-summarily-dismisses-two-fraud.html]

(2) By falsely claiming that its mark was in use "in commerce" as of May 19, 2012. In order to obtain a federal trademark registration (with one limited exception), the applicant must affirm that the mark is in use "in commerce" in the US, i.e., in commerce which may lawfully be regulated by Congress. The traditional way to do so is to file a declaration that the mark is in use on goods that have been sold in inter-state commerce, along with a specimen.  [Though the Trademark Office and the Courts often take a lenient view of what qualifies as "commerce" under the Lanham Act. (e.g. intrastate use that directly affects a type of commerce that Congress may regulate. See Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in “use in commerce”)]  Here Renegade alleges that EBS's declaration was false because EBC did not begin selling its beer across state lines until December 2013.


EBC Files Lawsuit:
EBC fired back at the end of last week by filing a trademark infringement lawsuit in Colorado federal court. It alleges that Renegade's use of the ELEVATION mark is infringing its trademark rights, and in the Complaint EBC states that actual consumer confusion has already occurred as a result of Renegade's use of the ELEVATION mark.  A copy of the complaint can be found here:
http://www.scribd.com/doc/223683314/Elevation-Complaint

Rogue vs. Rogue's Harbor

Oregon Brewing Company, the company behind the Rogue Brewery in Oregon, this week filed a lawsuit against a micro brewery in upstate New York over its use of the term "Rogue" in connection with beer.

Rogue Brewery is one of the largest craft breweries in the US (it was #27 in the latest Brewers Association rankings). It has been using the ROGUE name since 1989 and owns a federal trademark registration for the mark.




Rogue's Harbor Brewing is a micro brewery located outside of Ithaca, NY on the Finger Lakes Beer Trail. According to its website,
"We started brewing in 2011 offering 5 of our own craft beers... Every batch we brew produces 4 kegs offering plenty of beer to go around for the restaurant or for growler fills to take with you."

See: http://www.roguesharbor.com/our-beer#.U1F72FclWoY



It appears that the brewery is connected to the Rogue's Harbor Inn, which is a bed & breakfast that has been open since 1830. See: http://www.roguesharbor.com/history#.U1F9DFclWoY


A copy of the complaint can be found here:
http://www.scribd.com/doc/219036773/Rogue-Complaint

A Dog Fight

In case you thought you had heard it all when it comes to trademark battles between craft breweries, here is something for you. Yesterday, Thirsty Dog Brewing Company filed a lawsuit in Ohio Federal Court alleging that Sleepy Dog Brewery's use of the mark LEG HUMPER infringes its rights in the mark OLD LEGHUMPER.








-A copy of the complaint can be found here:
http://www.scribd.com/doc/219014788/Thirsty-Dog-Complaint

City Steam Goes on the Offensive Against Anchor

This is a brief update on my previous post concerning the lawsuit filed by Anchor Brewing against City Steam. (see: http://trademarkbar.blogspot.com/2014/02/anchor-steam-vs-city-steam-can-generic.html)

Last week City Steam filed an Answer to Anchor's Complaint, and it came out swinging. In addition to asserting a range of defenses, City Steam filed a number of counterclaims, including:

• Seeking a declaration that the terms "Steam" and "Steam Beer" are generic and that Anchor has no valid trademark rights in these words on their own; and 
• Claiming that Anchor has violated the Connecticut Unfair Trade Practices Act by making bad-faith trademark claims against City Steam knowing that the terms "Steam" and "Steam Beer" are generic, and by falsely claiming to the public that the word "STEAM" (or the phrase "ANCHOR STEAM") is a registered trademark.

The complete Counterclaims read as follows:

Declaratory Judgment of Invalidity:

• The standard character word(s) “STEAM” and/or “STEAM BEER” are ordinary common words which are descriptive and generic. “STEAM” and “STEAM BEER” are not inherently distinctive. The word “STEAM” is functional in nature, particularly as a method to manufacture beer which is widely used in the public domain.
• The word(s) “STEAM” and “STEAM BEER” in standard character form is generic and cannot be transformed by ANCHOR into a trademark.

Declaratory Judgment of Non-Infringement:

• [City Steam has] not used the “STEAM MARKS”.
• ANCHOR has no valid rights of exclusive control over the generic word(s) “STEAM” and “STEAM BEER”. ANCHOR expressly withdrew its application for trademark registration of the words “STEAM BEER” in standard character form, and restricted for applying for registration in the future. ANCHOR surrendered the words “STEAM BEER” to the public domain. ANCHOR has no valid and sustaining trademark rights in the standard character words “STEAM” or “STEAM BEER”.

Declaratory Judgment of Unenforceability:

• The generic, descriptive, and functional nature of the words “STEAM” and “STEAM BEER” in standard character form make them unenforceable as a trademark.
• ANCHOR’s prior admissions prejudice its right to any claim that the words “STEAM” and “STEAM BEER” in standard character form are registerable as trademarks.

Violation of the Connecticut Unfair Trade Practices Act:

• ANCHOR has in bad-faith asserted trademark claims against [CITY STEAM] knowing that it had expressly withdrawn its trademark application and had prejudiced the rights it now asserts.
• ANCHOR has repeatedly asserted similar claims against numerous third parties who have utilized the word “STEAM” or the words “STEAM BEER” in association with the marketing or sale of beer.
• ANCHOR has made false claims to the public by advertising the word “STEAM” and/or the phrase “ANCHOR STEAM” with the designation of a trademark registration symbol when it holds no valid trademark registrations for said word or phrase.
• ANCHOR’s conduct is immoral, unethical, oppressive, or unscrupulous.
• ANCHOR’s conduct has caused and causes...CITY STEAM substantial injury and an ascertainable monetary loss.
• ANCHOR has engaged in a pattern of unfair and deceptive acts and practices in violation of the Connecticut Unfair Trade Practices Act by asserting these bad-faith trademark claims against [CITY STEAM].

See: http://www.docstoc.com/docs/document-preview.aspx?doc_id=168180920

Atlas Brewing Company v. Atlas Brew Works

Two craft breweries are battling over the right to the name "Atlas". This case is instructive because it highlights not only the difficulties that craft breweries often face when it comes to choosing a name, but also the various types of issues that may arise as they navigate the waters of the Trademark Office.

The Parties:


Atlas Brewing Company ("ABC") is a Chicago based brew pub owned by two brothers. According to ABC's website, the "Atlas" name was inspired by a previous Chicago-based brewery that closed after Prohibition:
"Building on the tradition of Chicago’s neighborhood breweries, we brought back the Atlas name. Atlas was a Chicago brewery that began in 1896 and closed after Prohibition." See: http://www.atlasbeercompany.com/about-us/



Atlas Brew Works ("ABW") is a Washington, DC based brewery that launched in September 2013. See: http://atlasbrewworks.com/


The Applications:
ABW filed an application for the mark ATLAS on June 1, 2012 on an intent-to-use basis. The application received an initial objection from the Trademark Examiner based on an existing registration for the mark SKINNY ATLAS LIGHT, which also covered beer. ABW submitted arguments in response to the objection, and the Examiner then allowed the application to proceed to publication. [The registration for the SKINNY ATLAS LIGHT mark was subsequently cancelled after the registrant failed to file a 6-Year Affidavit of Use.]

On October 24, 2013, ABC filed applications for the marks ATLAS BREWING COMPANY and ATLAS GOLDEN ALE, both claiming a date of first use of July 19, 2012. The Trademark Examiner cited ABW's application as grounds for a refusal against both of ABC's applications. The applications were subsequently suspended pending the outcome of the opposition proceeding.

The Opposition:

ABC filed an opposition proceeding against ABW's application in April 2013.  As grounds for the opposition, ABC claimed that it had priority over ABW and that there is a likelihood of confusion between the ATLAS and ATLAS BREWING COMPANY marks.  Upon first glance at the facts, one may wonder how ABC could allege that it had priority given that its application claimed a date of first use of July 19, 2012 and ABW's application was filed over one month earlier, on June 4, 2012. This is because the type of use that may be sufficient to support a claim of priority is broader than that which is necessary to support an application to register a mark. Specifically, an opposer can establish priority based on (i) trade name use or (ii) use analogous to trademark or trade name use. In other words, for purposes of proving priority, an opposer is not limited to the date of first use it provided in its own trademark application because that just refers to the date the mark was first used "as a trademark" (i.e. in connection with the provision of the goods/services listed in the application), and it is possible that it had developed a trade identity in the mark before that point.

In its Notice of Opposition, ABC claims that it has priority based on its use of the trade name "Atlas Brewing Company" prior to June 4, 2012. ABC alleges that it had prominently publicized its trade name as of this date, and that its use of the name had attained a significant amount of public recognition in connection with beer.  It notes that a simple internet search would have revealed several entries demonstrating its use of this trade name. See: http://ttabvue.uspto.gov/ttabvue/v?pno=91210379&pty=OPP

ABC recently sought to add two additional grounds for opposition: (1) that ABW lacked a bona fide intention to use the ATLAS mark when it filed its application; and (2) that the ATLAS mark is primarily geographicly descriptive.

Bona Fide Intent to Use:
An application filed on an intent-to-use basis allows parties that intend to use a trademark in the US, but have not yet started offering goods or services under the mark, to secure nationwide priority in the mark.  However, one important condition to such an application is that the applicant must possess a "bona fide" intent to use the mark in the "ordinary course of trade" and "not merely to reserve a right" in the mark. See: http://thettablog.blogspot.com/2013/10/precedential-no-39-ttab-sustains-swatch.html (Board found that application was filed merely in order to reserve a right in the mark in case applicant made a firm decision to develop a product in the future.)

Here, ABC is arguing that ABW filed the application to merely reserve a right in the ATLAS mark, and therefore, it did not possess a bona fide intent to use the mark in the ordinary course of trade.  It turns out that ABW had first sought to use and register another mark, VOLSTEAD BEER WORKS, but had encountered an objection based on a previously filed application for the mark VOLSTEAD which covered distilled spirits. One of the documents that ABW produced during discovery was an email from June 5, 2012 (one day after its application for ATLAS was filed) in which ABW's CEO described the issue with the VOLSTEAD mark. He stated that they had reached out to the other party to see if the issue could be resolved, but he was not hopeful that they would be able to continue with the name. He then went on to state that after going through hundreds of alternatives, they had landed on Atlas Beer Works, and he asked for feedback.  ABC contends that this email demonstrates that ABW was merely trying to reserve the ATLAS mark in case the issue with the VOLSTEAD mark could not be resolved, and that its concurrent applications for two different marks is akin to warehousing of marks.


Geographically Descriptive:
A mark that is primarily geographically descriptive of the goods identified in the application may not be granted registration on the Principal Register. A mark is considered to be "primarily geographically descriptive" if:
(1) the mark's primary significance is a generally known geographic location, and
(2) the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark.
 See: http://thettablog.blogspot.com/2007/12/precedential-no-66-ttab-finds-yosemite.html (YOSEMITE BEER geographically descriptive for beer); http://thettablog.blogspot.com/2011/10/ttab-finds-fire-island-primarily.html (FIRE ISLAND geographically descriptive for beer).

Here, ABC argues that the "Atlas" term is primarily geographically descriptive because it refers to the "Atlas District" in Washington, DC.  In support of this claim, ABC cites statements of ABW that were produced during discovery, including that "[t]he Atlas District is the name of the commercial strip neighborhood in DC that we will be near."

The Tasmanian Devil does not Approve of Beer

 

The Tasmanian Devil cartoon character has been described as a "ferocious albeit dim-witted omnivore with a notoriously short temper and little patience". See: http://en.wikipedia.org/wiki/Tasmanian_Devil_%28Looney_Tunes%29. I'm sure that Steinbeck Brewing Company would agree with this assessment after Warner Brothers filed an opposition proceeding against its application to register the mark TASMANIAN DEVIL. 

Steinbeck Brewing Company is a California company which does business as Buffalo Bill's Brewery. See: http://www.buffalobillsbrewery.com/. Steinbeck filed applications for the marks TASMANIAN DEVIL and TASMANIAN DEVIL BARLEY TASMANIAN HOPS WATER YEAST BUFFALO BILL'S BREWERY & Design in January 2012.  The application for the design mark received an objection based on a third party application for the mark BUFFALO BILL CODY, but the application for the TASMANIAN DEVIL word mark was allowed and published for opposition in January 2013. After obtaining an extension, Warner Bros filed the opposition in July 2013.

The Opposition:

Warner Bros. did not pull any punches in its Notice of Opposition, attacking both the quality and reputation of Buffalo Bill's as well as Steinbeck's motivation in choosing the TASMANIAN DEVIL mark. For example, Warner Bros. alleged that:

• "Applicant operates "Buffalo Bill's Brew Pub, a disreputable bar and restaurant in Hayward, California that often receives customer complaints about the poor quality of its operations."
• "[I]t is because of Applicant's obvious inability to build a good reputation on its own that Applicant decided to boost its sales by misappropriating Opposer's TASMANIAN DEVIL and TAZ marks, with the added ulterior motive of inducing children or minors familiar with these marks to consumer alcohol sold by Applicant."

See: http://ttabvue.uspto.gov/ttabvue/v?pno=91211605&pty=OPP

While Warner Bros.'s hard-hitting allegations make for an interesting read on their own, there are also a few intriguing legal issues raised in the Opposition.  For example, in addition to the usual likelihood of confusion and dilution claims, Warner Bros. also alleged that Steinbeck should be precluded from registering the TASMANIAN DEVIL mark pursuant to the doctrine of res judicata or collateral estoppel. It turns out that Warner Bros.' predecessor in interest, Time Warner, prevailed in an opposition proceeding against Steinbeck over 10 years ago. In that case, the Board sustained Time Warner's opposition against Steinbeck's application for the mark TASMANIAN DEVIL GOOD FOR DRINKIN' 'N DOG BITES & Design on the ground that Steinbeck did not own the mark, and therefore, the application was void ab initio. So should the fact that Steinbeck was not the owner of the previous mark in 1999 preclude it from obtaining a registration for the TASMANIAN DEVIL mark today?

Res Judicata:

The doctrine of res judicata encompasses two related concepts: "issue preclusion" and "claim preclusion". "Issue preclusion refers to the effect of a judgment in foreclosing relitigation of a matter that has been litigated and decided. This effect also is referred to as direct or collateral estoppel." See: Migra v. Warren City Sch. Dist. Bd. of Educ. (465 U.S. 75).  In other words, if a specific issue has been litigated and a decision issued on the merits, a party cannot seek to raise that issue again in a different proceeding. "Claim preclusion refers to the effect of a judgment in foreclosing litigation of a matter that never has been litigated, because of a determination that it should have been advanced in an earlier suit." Id. In other words, a party may be precluded from raising a claim in a second proceeding, even if that particular claim was not raised in the first proceeding.

In the previous proceeding, Steinbeck stipulated to entry of summary judgment, without prejudice, because it was merely a licensee of the mark at issue. It explained that it mistakenly believed that its status as a licensee provided it with authority to seek registration of the mark.  In its stipulation filing, Steinbeck expressly noted that it continued to oppose the other grounds for Time Warner's opposition.

In its decision granting Time Warner's motion for summary judgment, the Board noted that "Applicant has indicated that it was not the owner of the mark when it filed the application. Thus, as a matter of law, the application is void."  Therefore, the Board found that "opposer's motion for summary judgment on the pleaded issue of ownership is granted; the remaining pleaded issues upon which opposer's motion is based, as well as the remaining pleaded issues in the notice of opposition, are moot."See: http://ttabvue.uspto.gov/ttabvue/v?pno=91119790&pty=OPP&eno=29.

It appears that Warner Bros. is arguing that the issue of ownership of the mark was already decided, and therefore issue preclusion should apply to this question. One would have to assume that Steinbeck would not make the same mistake twice, and that it is now the owner of the applied-for mark. If that is the case, Steinbeck will likely counter that there have been changed circumstances sufficient to prevent the application of issue preclusion.

On the claim preclusion issue, Warner Bros. will likely argue that there was a previous final decision on the merits involving a substantially similar mark, and therefore, Steinbeck should be precluded from taking a second bite at the apple.

In order to prevail on the issue of claim preclusion, Warner Bros. must show:

(1) identity of the parties or those in privity with the parties

(2) a final judgment on the merits of the prior claim; and

(3) that the second claim is based on the same transactional facts as the first and should have been litigated in the prior case. 

See: Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368 (Fed. Cir. 2006).

There likely won't be any dispute about the first and second factors, but presumably Buffalo Bill's will argue that the claims at issue here are based on a different set of transactional facts than those in the prior case, and that res judicata would also be inappropriate because the judgment in the previous case was entered without consideration of the merits of the likelihood of confusion and dilution claims.

The TTAB has previously applied claim preclusion to situations where an applicant sought to register a mark that was only a slight variation of an earlier mark that had been the subject of a successful opposition proceeding (even where the prior proceeding ended in a default judgment). See: http://thettablog.blogspot.com/2007/04/ttab-applies-res-judicata-sustains.html. On the other hand the TTAB has rejected a claim preclusion argument where parties have chosen to default in one proceeding, but defend against another proceeding for a substantially similar mark. See: http://thettablog.blogspot.com/2006/05/cafc-affirms-ttab-rejection-of-res.html. Steinbeck will be able to point to certain language in the Sharp decision to support its position that claim preclusion is inappropriate here, such as: "[t]he Supreme Court has cautioned that the offensive use of res judicata should be examined carefully to determine whether it would be unfair to the defendant."

It will be interesting to see how the Board comes out on this issue if the case proceeds to a decision.

[An interesting sidenote: this isn't the first time that a brewery has encountered an opposition based on the TASMANIAN DEVIL mark--Boston Beer Company's application for the mark DEVIL MOUNTAIN TASMANIAN PALE ALE was opposed by Time Warner in 1998. The matter was resolved by Boston Beer Company withdrawing the application, and Time Warner withdrawing the opposition. See: http://ttabvue.uspto.gov/ttabvue/v?qs=75285428]