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."