Legal issues: Freetail Brewing Co.

[ao125]

From the USPTO site:

Trademark Electronic Search System (TESS)
Trademark Electronic Search System (TESS)


Word Mark HOPASAURUS REX
Goods and Services IC 032. US 045 046 048. G & S: Beer. FIRST USE: 20000215. FIRST USE IN COMMERCE: 20000215
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 85038920
Filing Date May 14, 2010
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition October 5, 2010
Registration Number 3893953
Registration Date December 21, 2010
Owner (REGISTRANT) McKenzie Brewing Co. CORPORATION OREGON 199 EAST 5TH AVE Eugene OREGON 97401
Attorney of Record JANE M YATES
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

I'm guessing that Steelhead either bought out McKenzie and assumed their intellectual property and trademarks, or the nanos merged into a micro conglomerate.
It's the same address as listed on their site:
http://www.steelheadbrewery.com/eugene.htm

 

[Dr. Francois]

I love this! Would love to know who the ****** is that hired the lawyer!

These C&D letters (or "nastygrams" as my distiller buddy calls them) are really common and cheap to send. Usually they are sent from the bigger producer to a smaller producer to get the response desired without a lawsuit.

The big corporations can sue any small producer out of existence on these trademark issues.

 

[Homercidal]

I think someone just won the Internets!

 

[ao125]

Redacted PDF + Photoshop + brightness & contrast + Google:

Arnold Gallagher Percell Roberts & Potter, P.C.. Attorneys at Law
800 Willamette Street, Suite 800.
Eugene, OR 97401

 

[motobrewer]

willamette street!? classic.

You can definitely see the OR thru the black marker on the original PDF.

 

[Brewskii]

Redacted PDF + Photoshop + brightness & contrast + Google:

Arnold Gallagher Percell Roberts & Potter, P.C.. Attorneys at Law
800 Willamette Street, Suite 800.
Eugene, OR 97401

Now that's some NCIS sh!t right there

 

[ao125]

now that's some ncis sh!t right there

enhance!!!

 

[rhamilton]

Someone's going to be receiving a few free 'fetish catalogs' now

 

[SenorPepe]

Awesome.

 

[GrumpySquirrel]

That letter is so full of win... hahaha

 

[Phunhog]

Redacted PDF + Photoshop + brightness & contrast + Google:

Arnold Gallagher Percell Roberts & Potter, P.C.. Attorneys at Law
800 Willamette Street, Suite 800.
Eugene, OR 97401

Well that settles it!! Steelhead Brewing is in Eugene!!

 

[ao125]

Seems kinda like a d!ck move for McKenzie Brewing Co. / Steelhead Brewing Company to do it.

I mean, I kinda get it... "Hopasaurus Rex" apparently took Gold at GABF in 2001 and they went to the trouble of spending the trademark fee on it - but still, it's a simple matter that could have been cool-headedly discussed between two breweries without the need for legal threats.

 

[Airborneguy]

How do we know that the first brewery didn't send a simple letter which elicited this over-the-top response? Personally, if I had a valid trademark/copyright, tried to defend it, and received this in response, we'd be in court and I would do it in the most expensive way possible for the other brewery.

 

[zentr]

I wish everyone was that cool.

 

[stamandster]

This is awesome! Reminds me of the Monster Cable guys and their group of zombie lawyers picking on anyone that uses Monster in their name. They weren't after Monster Golf or something once, lol.

 

[Artemisag]

Good for them. Thats BS

 

[JJL]

This is kind of rehashing an old argument. The last thread about copyright I read was Bell's sending a C&D notice to Northern Brewer over the use of the 2 hearted ale name. NB had clone kit that used the name IIRC. People in the thread thought it was a d!ck move for Bell's to send the letter and that they should have just asked NB to change the name. But, the reality is that they had to send the letter to protect the name. NB might not have been trying to maliciously profit from the name, but someone else might. So Bell's had to defend it against everyone.

It's the same case here. Steelhead (allegedly) probably has no issue with Freetail, but they have to protect the mark using legal channels. If they ever had to go to court over TM infringement they can't just say, "Well we talked to Freetail about it and they promised to stop using the mark." And, let's face it, legal notices always sound like they are written by some anal retentive jerk no matter what they're for.

On a lighter note, the response was hilarious. And he can get away with it because the likelihood Steelhead (allegedly) is going to sue him is slim to none.

 

[Homercidal]

This is awesome! Reminds me of the Monster Cable guys and their group of zombie lawyers picking on anyone that uses Monster in their name. They weren't after Monster Golf or something once, lol.

You may be thinking of Monster Energy Drinks who sued the people who make Vermonster Beer. I think The Vermonster was like a huge barleywine. They settled out of court after Monster Energy got reamed on the webs and people started boycotting them.

I wonder where I could find a little plastic tyrannosaurus action figure and some little white flags to send to these people.

 

[cjb]

I love the response, but I can't say I blame Steelhead for trying to protect their trademark. From my understanding, the law REQUIRES that you do so for every known infringement, otherwise you could lose your standing to protect it in the future. If they let this one slide without a cease & desist, there's nothing stopping Miller from coming out with a "Hopasaurus Rex" tomorrow and claiming that Steelhead has given up its right to the trademark. You can't selectively enforce it.

 

[TyTanium]

As cool as most brewers / breweries are, they are still a business, and are, in fact, in business to make money. Let's not be so quick to pass judgement here. Many people pick beers for what looks & sounds cool, and when there are so many beer names with "hop__something___" on the shelves, and they finally come up with a clever name to fool the some hopheads into buying their beer, I'd want to protect it too. Not a turd move, just normal standard business practice. I'm sure they probably laughed at the response too.

and +1 for precedent as JJL & cjb said. Needs to be in writing, preferable in lawyer-speak.

 

[geer537]

I wonder where I could find a little plastic tyrannosaurus action figure and some little white flags to send to these people.

Toysmith Soft Dinosaur : Target

2.99 at Target- The white flags should be easy to find. It'd be awesome to hear that they received a ton of these things from the HBT'ers

 

[fifelee]

Steelhead could have called first and informed Freetail they had to sent a letter to satisfy the trademark protection rules. Dick move by steelhead, great response.

 

[cjb]

Steelhead could have called first and informed Freetail they had to sent a letter to satisfy the trademark protection rules. Dick move by steelhead, great response.

Now that point I agree with. If it was me, I would have called them up and said "Hey man, we have a trademark on that name, I'd appreciate if you don't use it. We have to send a C&D letter for legal reasons, but just wanted to give you a heads up..."

 

[pm5k00]

i have had the hopasaurus rex at freetail before, its very good, and on the menu and chalk board they call it such with no such reference to a process.

 

[JJL]

Steelhead could have called first and informed Freetail they had to sent a letter to satisfy the trademark protection rules. Dick move by steelhead, great response.

Now that point I agree with. If it was me, I would have called them up and said "Hey man, we have a trademark on that name, I'd appreciate if you don't use it. We have to send a C&D letter for legal reasons, but just wanted to give you a heads up..."

It would have been nice, but you're assuming Steelhead (allegedly) actually did the trademark search themselves. They definitely didn't. That's why there is a C&D from an attorney. They hired a TM attorney to do a TM search and then handle the C&D process. Steelhead (allegedly) probably just got a list from the attorney that said, "We found these market labels that use your TM. We sent out C&D notices." None of this is malicious. It's just business.

 

[Firebat138]

How do we know that the first brewery didn't send a simple letter which elicited this over-the-top response? Personally, if I had a valid trademark/copyright, tried to defend it, and received this in response, we'd be in court and I would do it in the most expensive way possible for the other brewery.

You would have no legal recourse to go to court... They are not brewing a beer by the same name... Its like their hoprocket or something i think... they can call a process anything they want... But they could have changed it on the website... it IS listed under beers... very confusing

I think blowing a hole in a Nintendo or game console is legal in 5 counties though.

 

[Clanchief]

It would have been nice, but you're assuming Steelhead (allegedly) actually did the trademark search themselves. They definitely didn't. That's why there is a C&D from an attorney. They hired a TM attorney to do a TM search and then handle the C&D process. Steelhead (allegedly) probably just got a list from the attorney that said, "We found these market labels that use your TM. We sent out C&D notices."

Actually I doubt that that's the case. The cost to have a patent attorney essentially on-staff doing things like that is pretty darn high. As it's a specialized area of law, you'll find that generally speaking they are able to charge higher rates. Usually upwards of $500 p/h. I'm honestly not sure that a small brewery could afford to have an attorney constantly checking stuff like that.

On the other hand, I could see them having someone on their office staff checking this stuff like once or twice a week, and then forwarding it on to counsel to churn out the C&D. That's a .2 hour bill, because it's a form letter saved to their system where they only have to change a few particulars.

The really funny thing about this letter is that it will cost (presumably) Steelhead some more money. If they had, as others suggested, called over, said hey, we understand you're using this, we just want to clear it up, but legally we are obligated to send the C&D letter, then they wouldn't have gotten this snarky response. Which, BTW, for those who have said they would just go ahead and sue Freetail after receiving this, note that standing would be removed, as he immediately said in his response that he will acquiesce, and give up the use of that name. But now, not only has Steelhead gotten themselves some bad press, they will also incur an additional legal fee since their attorney will have to review this letter once received, and then communicate the results back to the client. That's probably another .5 hours in billings.

Well done!

 

[PIGMAN]

How do we know that the first brewery didn't send a simple letter which elicited this over-the-top response? Personally, if I had a valid trademark/copyright, tried to defend it, and received this in response, we'd be in court and I would do it in the most expensive way possible for the other brewery.

Agree. If you don't defend your trademark, you lose it.

 

[moti_mo]

That response is hilarious, it made my lunch hour. Its also just business, so I don't really see the C&D letter as a dick move by any means. Business is business. The response, though, is very well played.

 

[Bobby_M]

I get that brewing is generally made up of renegades and rebels and involving legalities is the furthest thing that people want to do, it's a necessary evil to protect your trademarks. If you don't defend them, you lose them and you don't get a refund for your troubles. While the retort letter may have been humorous, they are wrong and can definitely be sued. Oh well, sometimes doing the right thing is so uncool.

It seems that as soon as the aggressor is identified as being the bigger entity, they are deemed "the man" who must be protested and boycotted.