Trademark Infringement Cases in the Brewery Industry & How to Avoid Them

Sep. 16, 2016

Some of you may be aware that there is an ongoing lawsuit between two Minneapolis breweries about a trademark dispute – Smokehouse Brewpub, LLC v. Lucid Brewing LLC.  An oversimplified breakdown of the facts at issue looks like this:

  • Smokehouse Brewpub, LLC (Smokehouse) files an application with the Patent and Trademark Office (PTO) for NORTHBOUND SMOKEHOUSE BREWPUB on February 23, 2012 and the registration date for that mark is November 27, 2012.
  • Lucid Brewing LLC (Lucid) files for the INBOUND trademark with the State of Minnesota on March 2, 2016.
  • Smokehouse files an application with the PTO for INBOUND on August 3, 2015 on an intent to use basis.
  • Smokehouse files an application with the PTO for OUTBOUND on August 3, 2015 on an intent to use basis.
  • Lucid Brewing LLC (Lucid) files an application with the PTO for INBOUND on August 11, 2015, claiming first use on May 8, 2015. The “specimen” for the application was a picture of people in Inbound Brew Co. t-shirts even though Lucid sought registration of INBOUND for beer.
  • Lucid was issued registration of its mark NORTH LOOP on July 26, 2016.

There is actually more to the case but for the sake of an attempt at clarity, we’re limiting our discussion.

Smokehouse claims that, among other things, Lucid’s use of INBOUND and NORTH LOOP BREWCO infringe on Smokehouse’s rights to NORTHBOUND SMOKEHOUSE BREWPUB, INBOUND, and OUTBOUND.  In fact, Smokehouse was able to show “actual confusion” among consumers, which greatly strengthens its claim for trademark infringement:

On or around August 11, 2016, a member of the public was at Inbound BrewCo waiting for his friend to arrive. The friend was at Northbound but thought he was at Inbound BrewCo the whole time. The person used Twitter to post the conversation with his friend once they realized the confusion and stated, “Not the first time this has happened @NorthboundBrew @InboundBrewCo.” @InboundBrewCo responded, “first world brewery problems.”

Amended Complaint.

Breaking out the legal issues, there are a number of questions to be addressed, including:

  • Is INBOUND confusingly similar to OUTBOUND?
  • Who has priority on the INBOUND mark? And how does Lucid’s improper specimen in its application for INBOUND impact this decision, if at all?

To complicate things further, Lucid filed an opposition to Smokehouse’s application for INBOUND on October 29, 2015, claiming that Smokehouse only filed an application for INBOUND in bad faith once it discovered Lucid’s branding efforts and that it had no intent to actually use the name INBOUND on any of its beers.  Lucid, in that proceeding, claims that its first use of INBOUND on beer for sale was July 24, 2015.  That date is important because it establishes “use in commerce,” and, if true, it establishes Lucid as the “senior user” of the INBOUND mark.  As a “senior user” that began use prior to Smokehouse’s filing of the intent to use application, Lucid may have an argument for cancelation of Smokehouse’s application for INBOUND.

With respect to the PTO proceeding, Smokehouse has argued that Lucid, by allowing other similar marks to coexist (e.g., OUTBOUND and NORTHBOUND SMOKEHOUSE BREWPUB) Lucid cannot oppose its application for INBOUND.

This is a complicated description of an even more complicated dispute that may have a significant impact on both breweries.  This all points to the importance of finding a lawyer that knows trademark law so that issues like this can hopefully be avoided.

Another thing to keep in mind is that not all good lawyers are really expensive.  Inbound, in a statement, said: “We don’t have a lawyer on staff so rather than hire more people and grow our company we have to hire a REALLY expensive guy in a suit to handle this.”  At Hop Law, we are not “really expensive,” and frankly, unless we’re going to court, we don’t wear suits.  We do, however, provide great service.