April 18, 2019

Let’s Talk About Beer (Law)

BeerColorado loves its beer. Denver is the nation’s former microbrew capital and microbreweries throughout the state continue to thrive. Naturally, because beer business is big business, beer law became a practice area.

Manufacturing and selling alcohol is highly regulated, and microbreweries must comply with myriad state and federal alcohol regulations in addition to standard business regulations. Beyond the regulatory side of beer law, though, are intellectual property concerns. Recently, New Belgium Brewery has been involved in a publicized case about trademark rights to its Slow Ride Session IPA.

New Belgium filed for trademark protection for its Slow Ride IPA, which was granted without opposition by the USPTO. Later, it learned that Oasis Texas Brewing Co. was producing a beer named Slow Ride Pale Ale. According to New Belgium, the Fort Collins brewery offered to resolve the issue amicably in order to allow both breweries to continue to use the Slow Ride name in certain locations, but Oasis refused, instead issuing a cease and desist letter to New Belgium in which it demanded that all products bearing the Slow Ride name be destroyed and profits from Slow Ride given to Oasis. (Oasis claims New Belgium tried to “strong arm” it into accepting a joint use agreement and says that all negotiations with New Belgium have devolved into hostility.) New Belgium eventually filed a lawsuit in the U.S. District Court for the District of Colorado, seeking exclusive use of the Slow Ride name pursuant to its trademark. Earlier this month, a federal judge dismissed the lawsuit for lack of personal jurisdiction over the Texas-based defendants.

The Slow Ride dispute is far from the first trademark dispute to arise from craft beer. Ohio-based Great Lakes Brewing agreed to change the name of its Alchemy IPA as a result of a trademark conflict with the Craft Beer Alliance. Innovation Brewery, a small craft brewery in North Carolina, was accused by Michigan-based Bell’s Brewery of infringing on its trademarked slogan, “bottling innovation since 1985.” Boulder-based Kettle and Stone Brewing Co. agreed to change its name after contact from California’s Stone Brewing Co. Lagunitas Brewery in California dropped its lawsuit against Sierra Nevada Brewing Co. after public outrage at its comparison of the two beer companies’ IPA logos. The list goes on and on.

Later this month, CLE will host its annual Rocky Mountain Intellectual Property Institute. The plenary session, “Innovation & Disruption: How Crafty Micro-brews are Shaking Up the Beer Industry,” features attorney Michael Drumm of Drumm Law Group, LLC and Chris Hill of Odyssey Beerworks Brewery & Taproom in Arvada. The Rocky Mountain IP Institute will also feature a beer tasting this year. To register, click the link below.

CLE Program: The 13th Annual Rocky Mountain Intellectual Property Institute

This CLE presentation will take place from Thursday, May 28 through Friday, May 29, 2015. Click here to register.

Can’t make the live program? Order the homestudy here – CDMP3

 

Tenth Circuit: Company Entitled to Sell Trademark Rights Post-Termination Continued to Own Rights Until Completion of Sale

The Tenth Circuit Court of Appeals issued its opinion in Derma Pen LLC v. 4EverYoung Limited on Tuesday, December 9, 2014.

Derma Pen, LLC and 4EverYoung Ltd. entered into a sales distribution agreement for a micro-needling device: Derma Pen would sell the device in the United States and 4EverYoung would sell it in the rest of the world. Their contract provided that upon termination, Derma Pen would offer to sell its rights to 4EverYoung. Derma Pen eventually terminated the agreement and 4EverYoung attempted to purchase Derma Pen’s trademark rights, but the parties reached an impasse and no sale occurred. Despite its lack of trademark rights, 4EverYoung started using Derma Pen’s trademark to sell the device in the United States. Derma Pen sued 4EverYoung and associated entities on over 15 claims, including trademark infringement and unfair competition under the Lanham Act. Derma Pen also moved for a preliminary injunction to prevent 4EverYoung from using the trademark in the United States. The district court denied the motion, finding that Derma Pen was unlikely to succeed on the merits, and Derma Pen appealed.

The Tenth Circuit reversed. Upon review of the existing record, the Tenth Circuit found that Derma Pen likely still owned the U.S. trademark rights until they were sold, and no sale had taken place. 4EverYoung argued that the agreement’s termination dissolved Derma Pen’s ownership rights, but the Tenth Circuit disagreed. Because the contract contemplated Derma Pen’s ability to sell its ownership rights post-termination, the Tenth Circuit found that Derma Pen likely still owned the trademark rights, and would be likely to succeed on the merits on this issue.

The district court’s denial of Derma Pen’s injunction was reversed, and the case was remanded for further proceedings.

Tenth Circuit: Summary Judgment for Junior Mark User Affirmed in Lanham Act Trademark Infringement Case

The Tenth Circuit Court of Appeals published its opinion in Hornady Manufacturing Co., Inc. v. DoubleTap, Inc. on Wednesday, March 19, 2014.

Hornady manufactures and sells firearm ammunition and related products. Hornady has sold various products under the name “TAP,” short for “Tactical Application Police.” In 1999, Hornady acquired trademark registration for the nonstylized word mark, “TAP.” DoubleTap was founded in 2002 by Michael McNett. DoubleTap has been described as a “niche” ammunition manufacturer.

In January 2010, Hornady sent DoubleTap a cease-and-desist letter, demanding that DoubleTap discontinue using the word “Tap” on its products, remove “Tap” from its website, and destroy any materials it created bearing “Tap.” Hornady eventually filed suit, alleging trademark infringement under Sections 32 and 43(a) of the Lanham Act, common law trademark infringement, deceptive trade practices under Utah law, and unjust enrichment. Both parties moved for summary judgment, arguing that they were entitled to judgment as a matter of law on whether DoubleTap infringed on Hornady’s TAP mark. The district court denied Hornady’s motion and granted DoubleTap’s.

In deciding whether summary judgment was properly granted, the Tenth Circuit had to determine if DoubleTap’s mark was likely to cause confusion with Hornady’s mark. The court applied “six nonexhaustive factors to evaluate whether there is a likelihood of confusion: (1) the degree of similarity between the competing marks; (2) the intent of the alleged infringer in adopting the contested mark; (3) evidence of actual confusion; (4) the similarity of the parties’ products and the manner in which the parties market them; (5) the degree of care that consumers are likely to exercise in purchasing the parties’ products; and (6) the strength of the contesting mark.”

After applying the six factors in a detailed opinion, the court held that consumers were unlikely to be confused by the marks and affirmed the award of summary judgment to DoubleTap.