This month, Orange County-based Bootlegger’s Brewery LLC settled its beer trademark dispute and federal lawsuit with Louisiana’s Abita Brewing Co. Inc. How can a craft brewery protect its name, brands, logos and slogans?
Bootlegger’s beer trademark registration
Founded in 2008, Bootlegger’s is a craft brewery distributing seven year-round beers and a number of seasonal brews throughout Central and Southern California. Bootlegger’s owns federally registered beer trademarks for the Bootlegger’s Brewery name and a number of its beer brands.
Abita lawsuit and settlement
In December 2015, Abita launched its Bayou Bootlegger Hard Root Beer. Abita foresees that the hard root beer (a flavored beer brewed to 5.9 percent ABV) will be the first in a “Bayou Bootlegger” series of hard sodas. Bootlegger’s sued Abita in the U.S. District Court for the Central District of California (Case No. 8:16-cv-1390) in July 2016 for alleged trademark infringement and false designation of origin. Bootlegger’s sought disgorgement of Abita’s profits in connection with the hard soda and an injunction requiring Abita to cease and desist from using the “Bayou Bootlegger” beer trademark.
On January 5, 2017, Bootlegger and Abita dismissed all of their claims and counterclaims against one another with prejudice. As of this writing, although the terms of the parties’ settlement agreement have not been publicly disclosed, Abita has not filed for federal protection of the “Bayou Bootlegger” beer trademark, and both the Bootlegger’s and Abita Bayou Bootlegger websites are still up and running. Basically, both breweries seem to have agreed to just cruising along like before; perhaps Abita agreed to stay only in the “hard soda” space with the name.
Breweries: Protect your brands
Unanticipated trademark infringement lawsuits can prove fatal for burgeoning craft breweries. As the above-referenced case illustrates, it is essential that businesses conduct a thorough trademark clearance search before committing to a new business or brand name.
By the same token, craft breweries that invest in proper protection of their company name, brands, logos and slogans can enforce their beer trademark rights in the event that a competitor introduces a new beer or brewery with a confusingly similar name. Brewers that are interested in minimizing their legal risk and maximizing brand protection should contact experienced trademark counsel.
David O. Klein is the managing partner of Klein Moynihan Turco in New York, where he practices internet marketing law and intellectual property law. He can be reached at [email protected].
