Trademark update: Magic Hat, West Sixth both respond

As reported yesterday, West Sixth Brewing, located in Lexington, Ky., alleged on its blog and Facebook page that Magic Hat was taking legal action against the company because of trademark infringement claim. Magic Hat issued its response, saying West Sixth Brewing had actually agreed to change its logo as a result of Magic Hat’s initial trademark letter.

“West Sixth Brewing packaged the ‘perfect story’ of a large brewery beating up on a small start-up,” said Ryan Daley, brand manager of Magic Hat in a company press release. “The only problem is:  it’s not true.”

Be sure to read the latest trademark dispute update: Magic Hat files defamation charges against West Sixth

In the press release, Magic Hat said the talks between the two breweries started in September 2012 after “marketplace concerns surfaced by a Kentucky wholesaler who refused to carry West Sixth Brewing because he felt it too closely resembled Magic Hat, which he already distributed. Magic Hat sales representatives, who came across the West Sixth Brewing products in the Ohio and South Carolina markets, also expressed concerns about the similarities.”

“Our first step was to reach out to them. We hoped to handle it amicably. We had no desire to file a lawsuit against a fellow brewer,” Daley said. “We thought we had made a lot of progress with West Sixth. They agreed in principle to modify their design. And now they’re going back on their word and are attempting to tarnish our image instead.”

Magic Hat made available a PDF of its correspondence with West Sixth. There are six letters exchanged total, starting with Magic Hat’s initial letter on Sept. 26, 2012, which claimed that West Sixth was infringing on its #9 trademark. The main points of contention between the West Sixth logo and the #9 logo were:

• The 6 being and “inverted 9”
• The font style and circle enclosure of the 6.
• The star, or “dingbat,” element (which West Sixth called a compass on its logo)
• The prominence or lack thereof of the name West Sixth Brewing in conjunction with the logo — on certain products the name was prominent around the circle logo, and in some venues, like tap handles, it was removed in favor of just the circle logo.

Magic Hat’s letters claimed that these perceived issues of trademark infringement and unfair completion would damage Magic Hat’s brands and exposes West Sixth to liability, and the company requested that West Sixth stop using the logo to avoid legal action.

West Sixth’s letters show that the brewery did not agree with Magic Hat’s arguments, but despite its objections to all of Magic Hat’s claims, the company did work to resolve the matter. After some back and forth from both sides about what were necessary changes to resolve the issue, West Sixth did agree to phase out the circle-only logo, exhausting existing inventory, and only use the logo in conjunction with West Sixth Brewing around the outside, so as to make the brand clear. The company would also amend its current federal trademark application or re-file the application with the new design.

The only change that West Sixth did not agree to in the final letter, that Magic Hat has requested, was removal of the dingbat element because it A) was going to be too expensive to redesign, B) Magic Hat stated they might not approve of a replacement element either. So, the company offered the compromise in that final letter for the same element to remain in the logo, as long as the logo was always accompanied by the West Sixth Brewing label — basically to never use the circle logo by itself ever again.

“There is no need to replace items that may still use the Circle Logo with the compass design element where it is near West Sixth signage,” West Sixth stated in its letter ” … Use of the numeral 6 under circumstances where the West Sixth working appears close by eliminates any potential for consumer confusion.”

That is where the letter exchange ends in the PDF Magic Hat made available, with the last letter dated Feb. 27. West Sixth then posted its initial blog May 20 and launched a petition against Magic Hat.

Again, from Magic Hat’s press release:

“After months of working with them, they abruptly changed their minds and refused to take the simplest steps to avoid confusion and a lawsuit,” Daley said. “Unfortunately, we have no other option but to pursue legal action that protects the uniqueness of our brand. We notified West Sixth Brewing and they immediately began a smear campaign to pressure us to drop the lawsuit. This is all very unfortunate since they could have prevented it by living up to the commitments they made.”

UPDATE: West Sixth, in response to Magic Hat’s response, posted another blog, saying that if the dingbat element is the only thing causing this lawsuit, that they will work on a design element that more closely resembles the compass look they wanted, rather than a star:

We’re willing to phase out the current design of our compass and replace it with something that is more clearly a compass and not a star. Here are a couple quick options our designed worked up for you to choose from.

Will you publically agree to drop the lawsuit and trademark protest if we select one of these as our new trademark? We’ll let you pick the one you like best. You can email us directly here, or you can just post another update to your Facebook page, either one works.