18 Oct What’s in a Name? Well, a Cease & Desist Letter if it’s Too Similar to Someone Else’s
by Mark E. Lasbury for Indiana On Tap
Unless someone sees a beer label or brewery logo on a shelf or in a refrigerator case, the first introduction they are going to have to a craft brewery is the name of that brewery or the name of one its beers. Names are important in creating and crafting a brand, so a lot of time is put in on them.But, there are more than 7000 craft breweries in US now and more than 20,000 around the world.
If each US craft brewery produced just one new beer every other month (a very conservative estimate), then 42,000 beer names would be needed every year in the US alone. That’s alot of names, if you want it to be unique and identified only with your brand, it means that time and effort (and money) must be invested to come up with successful names – and that applies even more to breweries than to beers. Most beers are only ever served in the taproom, so names that are identified with only one brewery are less crucial.
But a brewery’s name is part of its story, a major way that they connect with their patronage. Even more crucial, it’s how they distinguish themselves from other breweries, so a name that is too similar to another can be trouble. It can lead to the dreaded cease & desist letter (C&D) and even to lawsuits. The C&D is one party’s indication that they believe another party has infringed on something that belongs to them, like a name. By producing something with the same name, the first party considers the second party is either 1) profiting from their name, or 2) damaging their brand by the use of the name.
Bud Light sent a funny C&D letter to Modist Brewing for their Dilly Dilly DIPA. image credit: Beer Street Journal
It doesn’t even have to be the actual name – it can just be close. And that’s where the decision comes in. Does the second party believe that first party is wrong, or that the closeness of the name plays no role and the first party is not being harmed? Then ignore the C&D or suggest a compromise. But, the first party may decide to go the route of litigation – that can’t be good for anyone.
A C&D over a beer name happens quite often, but let’s stick to brewery names for today’s discussion. Sometimes the C&D is between breweries; it became apparent early on that Big Woods Brewing in Nashville wasn’t going to be able to protect its trademark outside of Indiana because of Big Woods Brewing in Minnesota. That’s why we have Quaff On! Brewing now. In a strange reversal of fortune, Quaff On! they dealt with Quaff Brothers Brewing in Cincinnati – not by giving them a C&D, but by telling them that everything was fine. This sparked a good relationship between the two and they merged a couple of years ago. There’s always a couple of choices when these issues come up.
An example farther from home was Miami Brewing Company in Miami, FL. In 2016, they handed a C&D to M.I.A. Brewing in Doral, FL, just 15 miles away. Miami and M.I.A. aren’t the same, but I suppose they could be confused because both were using “Brewing Company.” The issue did go to litigation, and considering that M.I.A. Brewing is now called M.I.A. Beer Company, I guess it went Miami’s way.
The C&D could also come from a brewery having a name too close to that of a beer. In Indiana, this played out with Great Divide Brewing asking Red Yeti Brewing in Jeffersonville to change their name. Great Divide makes the Yeti American Double Stout and all its variants which are distributed to many states, including Indiana at certain times of the year. Since Great Divide predated Red Yeti by several years, Red Yet did comply and is now known as Red Foot Brewing at the Red Yeti restaurant.
Keystone Light’s new can labeling is a blatant attempt to look like Stone Brewing made the beer. image credit: businessinsider.com
There is a more public example that played out recently and is still ongoing. Stone Brewing is now suing Keystone Light because they changed their labeling to use a tiny font for Key huge font for STONE on their cans. I think Stone Brewing has a good case and should prevail – but that doesn’t mean they will.
Interestingly, a person can submit a C&D order against a brewery and ask them to change their name. In 2011 Phyllis Schlafly went to court to get her nephew, Thomas, to change the name of his St. Louis brewery (Schlafly Brewing). She (and a male cousin) stated that having a brewery associated with their name did them irreparable harm, to hers because she was a pundit with support from several temperance churches and he because he was a surgeon and alcohol is (in his opinion) unhealthy. In 2018, the court decided that the brewery could keep the name.
Finally, other companies can send out C&Ds or sue breweries over their name. Absolut Vodka sent off a C&D letter to Absolute Threshold Brewing in Fort Collins, CO over the fact that their name could stir up confusion between the spirits company and the beer company. This was before Absolute Threshold even opened their doors for their first day of business. Absolute Threshold understood the money that Absolut Vodka could bring to bear in a legal fight, so within weeks they announced that they would be opening as Intersect Brewing. It doesn’t seemed to have harmed them; they’re still around and have started distribution and packaging of their beer. That was an easy settlement, but it isn’t always that way. Just two weeks ago 3 Floyds Brewing brought an action against Floyd’s Spiked Seltzer of New Jersey.
The Chicago Tribune explained that Munster’s 3 Floyds feels that Floyd’s spiked beverages are inferior in quality and therefore the capitalization on the name Floyd’s does harm to 3 Floyds brand, both in reputation and sales. In their court filing, 3 Floyds included some very negative Untappd reviews of the Floyd’s products.
Yes, I can see how people might confuse that with Three Floyds. image credit: Floyd’s Spiked Beverages
Apparently these types of lawsuits are on the rise. “As the craft beer space continues to explode and mature…companies are becoming more serious and mature about protecting their intellectual property,” said Brendan Palfreyman, an attorney at Syracuse, New York’s Harris Beach PLLC. The lawyer stated that Three Floyds needs to show two things, 1) priority in the trademarking of the name, and 2) that consumers are likely to confuse the brands. It’s likely that this squabble started with a C&D letter, but it quickly escalated.
The letters are common now, but they can still sound scary. Often they come with a suggested remedy – stop using our name or a word that reminds people of our name……and give us three times your profits for your company of the last five years. Or perhaps they just want all of a brewery’s product, marketing materials, and signage so they can destroy it in front of them. Or perhaps they demand that a brewery can’t participate in some form of marketing for X years going forward. They are meant to scare, but they aren’t enforceable without litigation or unless a brewery capitulates in part or in full.
Attorney Palfreyman states that a new brewery wants to most likely to avoid such problems – the crazier their name, the better. But that can produce problems in remembering it or in branding. Plus, a crazy name in the US might be perfectly normal elsewhere – and C&Ds can be filed from country to country. All our examples above have had both parties located in the US, but doesn’t it have to be that way. Can a brewery in one country insist that a brewery in another country change their name, or even sue them over it? Since interstate commerce is involved, the lawsuit is of the federal variety, especially since Floyd’s spiked beverages are distributed in Indiana.
I asked local attorney and craft beer fan Garrett Lawton of Thrasher, Buschmann, and Voelkel for some information on C&D letters from country to country. As with so much with the law, it’s easier to talk about if you have specifics, but he was willing to talk about it in generalities – his advice boiled down to basically, “it depends.” To be successful, the brewery sending the C&D would likely need one of two things: their trademark would need to be registered in the country of the offending brewery or there needs to be some trademark reciprocity between the two countries in which the breweries reside. But even at that, unregistered trademarks can be defended too in limited circumstances. It’s likely a case by case issue.
Indiana has 178 breweries, and it turns out that many of them have names very close to other breweries in the US or other countries. Next time we’ll take a look at some of the breweries that have names which are eerily similar to other breweries and how they are dealing with that potential issue.
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