Saturday, January 4, 2014

"Strange" Trademark Dispute (Strange Brew v. Strangeways Brewing)

This case highlights the risk associated with engaging in trademark enforcement efforts-- you can quickly find yourself on the defensive.

Brian Powers is the owner of Strange Brew, a Massachusetts based home brewing supply business (see: Powers owns a federal trademark registration for the mark STRANGE BREW, which covers:

Class 32: Beer; and
Class 35: Retail stores featuring beer and wine making supplies.

In 2012, a small Virginia based craft brewery, Burton Brewing LLC, filed a trademark application for the mark STRANGEWAYS BREWING.  The application was approved by the Trademark Office and published for opposition in early 2013. In May 2013, Powers filed an opposition proceeding against the application, arguing that consumers are likely to be confused into believing that Strange Brew provides, or is affiliated with, the goods offered under the STRANGEWAYS BREWING mark.

Many small companies when faced with a trademark complaint will decide that it is more economical to simply abandon the mark and choose a new name. That's not what happened here. Instead, Burton Brewing decided to fight back. [NOTE: this may be partially explained by the fact that the owner's wife is an IP litigator at a major law firm-- see update below.] First, it filed an answer to the Notice of Opposition along with a counterclaim seeking cancellation of Powers' trademark registration on various grounds, including because the mark was allegedly not being used in connection with beer when the application was filed and is therefore void ab initio. [Burton Brewing alleges that, with the exception of two 1-day brewing demonstrations which occurred in 2012 and 2013, respectively, Powers has never sold finished beer under the STRANGE BREW mark.]

Not content to stop there, Burton Brewing also filed a lawsuit in federal court seeking a declaration that its use of the STRANGEWAYS BREWING mark does not infringe on Powers' rights in the STRANGE BREW mark, and requesting that the Court order the cancellation of Powers' trademark registration. Notably, as part of its court filing, Burton Brewing cited more than 20 third party uses of the term "Strange" in connection with beer, including: Strange Brewing Company; Strange Land Brewing; Strange Pelican Brewery; and Strange Brew Tavern.

Powers now finds himself in the unenviable position of having to hire counsel in Virginia and defend against a lawsuit in federal court. Interestingly, only a few months before Powers filed this Opposition proceeding, he had to defend against a cancellation action that was filed by another brewery, Strange Brewing Company, after Powers had sent them a cease and desist letter. [The petition for cancellation was withdrawn in December 2013 after the parties signed a settlement agreement.]

For additional background, see:

UPDATE (1/15/14): The parties have settled their dispute, with Strange Brew agreeing to withdraw its opposition to the STRANGEWAYS BREWING application and Burton Brewing agreeing to dismiss its lawsuit. Another interesting piece of information that has been revealed-- the attorney representing Burton Brewing is the owner's wife, who is an IP litigator at Hunton & Williams. See:

No comments:

Post a Comment