On the same day that he sued MolsonCoors Brewing Company (“MCBC”), Stone Brewing Co-Founder and Executive Chairman Greg Koch released a video on Stone’s YouTube channel explaining the lawsuit. “They know they can’t buy Stone. They can obfuscate, they can co-opt our brand and our good name.” ((Stone Brewing, Stone Brewing Sues Big Beer, YouTube (Feb. 12, 2018), https://www.youtube.com/watch?v=s7zW4Dnb_7g.)) The lawsuit states claims against MCBC for federal trademark infringement, false designation of origin, trademark dilution and unfair competition under state law stemming from MCBC’s recent marketing campaign for its Keystone Light lager brand. ((Complaint at 17-23, Stone Brewing Co. v. Molson Coors Brewing Co., (S.D. Cal. 2018) (No. 3:18CV00331).)) The campaign, which began in early 2017, included promotions encouraging beer drinkers to “hunt the stone” and featured a redesigned can that strongly emphasized the “stone” in “Keystone.” ((Id. at 15)) Stone alleges that the campaign is “brewing confusion in the marketplace.” ((Id. at 17.)) Koch concludes his video message with an ultimatum to MCBC: “stop using ‘stone’ as a standalone word because, when it comes as a standalone word in the world of beer, it’s ours.” ((Stone Brewing, supra note 1.))
Stone’s lawsuit represents just one trademark dispute in an increasingly contentious brewing industry. The heightened frequency of litigation has much to do with a booming craft brewing industry. The craft brewing movement began in earnest in the 1990s and has exploded in the last decade. While recently this growth has slowed slightly, the craft industry continues to make gains. In 2017, craft brewers ((The Brewers Association defines a “craft brewer” as small (producing less than six million barrels of beer annually), independent (less than 25% owned by a beverage alcohol industry member that is not a craft brewer), and traditional (a majority of its total beverage alcohol volume whose flavors derive from traditional or innovative brewing ingredients and their fermentation). Craft Brewer Defined, Brewers Ass’n, https://www.brewersassociation.org/statistics/craft-brewer-defined/ (last visited Mar. 27, 2018).)) saw a 5% growth in their production by volume and an 8% growth in retail dollar value, despite a slight decline in the overall beer market. ((Small and Independent Brewers See Sustained Growth in 2017, Brewers Ass’n (Mar. 27, 2018), https://www.brewersassociation.org/press-releases/small-and-independent-brewers-see-sustained-growth-in-2017/.)) The craft industry continued to wrest consumers away from its “Big Beer” rivals—it captured 12.7% market share by volume of the beer industry. ((Id.)) This recent success has led to a proliferation of craft breweries in the United States. Last year, 842 craft breweries opened their doors in the United States, along with over one hundred large non-craft or other non-craft breweries. ((Number of Breweries, Brewers Ass’n, https://www.brewersassociation.org/statistics/number-of-breweries/ (last visited Mar. 27, 2018).)) In 2012, there were 2,475 total breweries operating in the United States; in 2017, 6,372. ((Id.))
Competition between brewers is fierce, and brewers vying for bar taps and supermarket shelf space need a unique name to distinguish themselves from other brands. A good name has become increasingly difficult to find as brewers have rushed to claim names that are witty, distinct, and relevant to their product. ((Alastair Bland, Craft Brewers Are Running out of Names, and into Legal Spats, NPR: The Salt (Jan. 5, 2015, 9:08 AM), https://www.npr.org/sections/thesalt/2015/01/05/369445171/craft-brewers-are-running-out-of-names-and-into-legal-spats.)) To make matters worse, brewers need names not only for their breweries but also for their various beers. ((Sara Randazzo, Hopportunity Cost: Craft Brewers Brawl Over Catchy Names as Puns Run Dry, Wall St. J. (July 10, 2016, 1:10 PM), https://www.wsj.com/articles/hopportunity-cost-craft-brewers-brawl-over-catchy-names-as-puns-run-dry-1468170639.)) As a product that often contains only four ingredients, there are only so many beer-related puns available, and brewers have nearly exhausted the beer lexicon seeking distinctive names that fit the spirit of their particular brewery. ((Id.)) Inevitably, craft brewers have run into each other’s trademarks, even as brewers have gone further afield to find names that avoid these kinds of disputes. ((Brewers that seek name inspiration outside of brewing terminology may still find themselves embroiled in trademark litigation from entirely different industries. See, e.g., Monk v. North Coast Brewing Co., 2018 WL 646679 (N.D. Cal. 2018) ( No. 17-cv-05015-HSG) (finding that the estate of jazz legend Thelonious Monk had stated a claim for trademark infringement against a brewery that depicted Monk on the label of its “Brother Thelonious” ale).))
Sophisticated craft brewers like Stone have increasingly turned to intellectual property law to protect the value of their brands, mostly from other craft brewers that have settled on names uncomfortably similar to their own marks. The Lanham Trademark Act provides broad protection for brewers’ registered and unregistered trademarks and trade dresses. ((15 U.S.C. § 1114 (2012); 15 U.S.C. § 1125 (2012).)) To establish a trademark infringement or unfair competition claim under the Lanham Act, a plaintiff must show, among other things, that the defendant’s use of the mark causes a likelihood of confusion for the relevant consuming public. ((See New West Corp. v. NYM Co. of California, 595 F2d 1194, 1201 (9th Cir. 1979).)) Courts consider eight factors in determining whether such a likelihood exists: the strength of the mark, the proximity of the goods, the similarity of the marks, evidence of actual confusion, the marketing channels used, the type of good and the degree of care likely to be exercised by the purchaser, the defendant’s intent in selecting the mark, and the likelihood of expansion of the product lines. ((AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). See also Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2nd Cir. 1961).))
In brewery trademark litigation specifically, courts have indicated that due to the nature of the beer industry, several of these factors tend to cause consumer confusion. The “proximity of the goods” factor pushes courts to find a likelihood of confusion where “the goods are complementary, . . . sold to the same class of purchasers, . . . or . . . similar in use and function.” ((Sleekcraft, 599 F.2d at 350.)) In beer trademark disputes, courts have generally refused to categorize beers at a more specific level of granularity than “beer,” finding all beers to be closely related products. ((See Anheuser-Busch, Inc. v. Caught-on-Bleu, Inc., 288 F. Supp. 2d 105, 118 (D.N.H. 2003) (“There is no dispute that the buying public would reasonably think that an ale and a lager came from the same source.”); Brooklyn Brewery Corp. v. Black Ops Brewing, Inc., 156 F. Supp. 3d 1173, 1183 (E.D. Cal. 2016) (finding that the factor weighed heavily in favor of finding a likelihood of confusion because both parties used the mark to sell “beer,” despite claims that the beers were significantly different). But cf. Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 148 (2nd Cir. 1997) (suggesting that “Honey Brown,” while a generic term when applied to ales, might be a descriptive term when applied to lagers).)) This “world of beer” approach greatly increases the risk that a court will find a likelihood of confusion, even where plaintiff and defendant brewers do not brew the same types of beer. Similarly, the “type of good and degree of care likely to be exercised by the purchaser” factor also weighs in favor of a finding a likelihood of confusion in these cases because of the “relatively inexpensive nature of . . . beer products and the ‘chaotic’ environment in which [brewer] products are likely to be purchased.” ((Brooklyn Brewery Corp., 156 F. Supp. 3d at 1183 (E.D. Cal. 2016). See also Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc., WL 1543817 (S.D.N.Y. 2002) (No. 02 CIV. 0861).)) Beer drinkers may not appreciate brand distinctions when ordering drinks in a crowded bar. A defendant in a brewery trademark case must overcome these factors by showing that their marks are not similar or that the plaintiff’s mark is not entitled to strong protection.
The “strength of the mark” factor determines how much protection a court will give a mark and is especially important for brewers as they pick names and labels. For the purpose of trademark analysis, terms can be divided into four categories of ascending strength: generic, descriptive, suggestive, and arbitrary or fanciful. ((Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2nd Cir. 1976).)) Generic terms are common, basic words that refer “to the genus of which the particular product is a species;” ((Id. at 9.)) they may not be trademarked and warrant minimal protection under federal trademark law. ((See, e.g., Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (2d Cir. 1977) (finding that “light” was a generic or common descriptive term as applied to beer and could not be exclusively appropriated as a trademark).)) Descriptive terms describe some quality of the good or its origins and may be trademarked only if they have taken on a secondary meaning in the marketplace. Suggestive terms are similar to descriptive terms but require “imagination, thought and perception to reach a conclusion as to the nature of goods.” ((Stix Products, Inc. v. United Merchants & Manufacturers Inc. 295 F. Supp. 479, 488 (S.D.N.Y. 1968).)) Finally, arbitrary or fanciful terms are words not typically associated with the good or its qualities. Suggestive, arbitrary, and fanciful terms are considered strong marks and receive broad protection. ((See Abercrombie & Fitch Co., 537 F.2d at 11.))
This scale of increasing protection provides some guidance for brewers in the naming process. Brewers may choose generic names or apply descriptive terms to their beers (such as “IPA”) without fear of infringing on another brewer’s trademark (with the caveat that a descriptive term may have acquired a secondary meaning). Of course, generic names do not generate much consumer interest, so brewers may not be inclined to give their beers generic or descriptive names. More creative names, however, can be dangerous. Names not derived from the brewing lexicon have greater protection under the Lanham Act, but come with an increased risk of trademark litigation if any one of the 6,371 other brewers in the country has used the name in connection with their brewery. “Stone Brewing” for example, would be classified as an arbitrary term because stones are not associated with or involved in the brewing process. For that reason, trademark law assumes that consumers will associate the word “stone” with the Stone Brewing Company when they see that term on beer labels. In shortening “Keystone” to “stone,” MCBC is appropriating that consumer association of “stone” with Stone Brewing. Whatever its intent, MCBC’s campaign does create some brand affiliation between Stone Brewing and Keystone that could confuse consumers.
In addition to the legal obstacles of defending a trademark, craft brewers must also contend with the misgivings of their own customers. The craft brewing movement prides itself on community; its devotees see craft brewers as the antithesis of the corporate beer industry. “Big Beer” has historically wielded trademark litigation to snuff out competition from smaller breweries ((See, e.g., Anheuser-Busch, Inc. v. Du Bois Brewing Co., 175 F.2d 370 (3rd Cir. 1949); Anheuser-Busch, Inc., v. Power City Brewery, 28 F. Supp. 740 (W.D.N.Y. 1939); Joseph Schlitz Brewing Co. v. Houston Ice & Brewing Co., 241 F. 817 (5th Cir. 1917).)) and to battle each other. ((See, e.g., Anheuser-Busch Inc. v. Stroh Brewery Co. 750 F.2d 631 (8th Cir. 1984); Miller Brewing Co. v. Falstaff Brewing Corp., 655 F.2d 5 (1st Cir. 1981); Miller Brewing Co. v. Joseph Schlitz Brewing Co., 605 F.2d 990 (7th Cir. 1979).)) This use has left craft beer drinkers suspicious of litigation as a legitimate business tool. In the early years of the craft brewing movement, craft brewers eschewed formal legal proceedings when they discovered infringing marks, preferring to settle potential disputes with a phone call. In 2006, Russian River Brewing Co. and Avery Brewing Co.—both parties craft breweries with national distributions—found that they both parties were brewing a beer named “Salvation.” After some discussion, the two breweries decided to combine their beers. The resulting beer was the aptly named “Collaboration, Not Litigation.” ((Samantha Drake, Craft Beer’s Recent Spate of Lawsuits Has Beer Drinkers Hopping Mad, Quartz (Jan. 13, 2016), https://qz.com/589208/craft-beers-recent-spate-of-lawsuits-has-beer-drinkers-hopping-mad/.))
Those halcyon days of collaboration are gone. In today’s competitive market, craft brewers must litigate to preserve their brands. This has left a bitter taste in the mouths of some craft beer drinkers. In 2015, Lagunitas Brewing sued fellow craft brewery Sierra Nevada for the latter’s labelling of its new “Hop Hunter India Pale Ale.” Lagunitas claimed that it owned a registered trademark for the large block lettering of “IPA” on its labels and that Sierra Nevada’s new ale bore a label that was likely to confuse consumers. ((Complaint at 11, Lagunitas Brewing Co. v. Sierra Nevada Brewing Co., (N.D. Cal. 2015) (No. 15-cv-00153-JSW).)) The craft beer community’s response to the lawsuit was swift and damning. ((Chris Furnari, Lagunitas Plans to Drop Suit Against Sierra Nevada, Brewbound (Jan. 14, 2015, 12:42 PM), https://www.brewbound.com/news/lagunitas-plans-drop-suit-sierra-nevada.)) Outraged craft drinkers took to social media to mock Lagunitas, and the beleaguered brewer voluntarily dismissed its infringement suit the next day. ((Id.)) Despite this animosity, established craft brewers have continued to wade, albeit cautiously, into trademark litigation. ((See, e.g., Al Jones, Bell’s Brewery Loses Trademark Dispute with North Carolina Brewery, MLive (Jan. 12, 2018), http://www.mlive.com/news/kalamazoo/index.ssf/2018/01/bells_brewing_loses_trademark.html.))
Intellectual property represents the most significant asset of most brewers, and no brewer can afford to let competitors dilute the strength of its name without a fight. Stone Brewing’s lawsuit against MCBC is an opportunity for a respected craft brewer to demonstrate the utility of trademarks to skeptical craft beer drinkers. In bringing a trademark lawsuit against an international beer conglomerate, Stone should be able to rally craft beer enthusiasts to its banner, even if those fans do not support litigation between craft brewers. However, with new craft breweries opening every day and the number of feasible names running low, trademark litigation between craft brewers is not likely to fizzle out any time soon. Craft beer enthusiasts will have to embrace trademark litigation between craft brewers as a legitimate tool in an increasingly competitive industry; the alternative is a beer market populated with generic brands and uninspired brews.
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