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