So wait you can trademark a single word? Or the song happy birthday? Or sue for spilling a coffee? When and where does it end?
20 years ago in college we called them stones. Maybe they should sue stone brewing co.
Some housekeeping: The song, "Happy Birthday" involved a copyright, not a trademark. The McDonald's coffee case was not about her spilling coffee on herself, but rather the coffee being 50* F hotter (190* v. 140*) than industry/reasonable standard. It was a defective product, she ordered coffee; but got hot freaking lava instead. Neither of those examples apply to the Stone v. Keystone case.
Back to Stone. Yes, you can trademark a word, but it has to meet specific requirements. According to the United States Patent Office, "A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others." The phrase, "Stone Brewing" distinguishes its beer from other breweries. The word, "Keystone" distinguishes that beer from others. But like fresh wort, it gets sticky.
For purposes of the suit, the standard for establishing trademark infringement is likelihood of confusion; that is, whether a consumer could be confused. This results in a multi-factor (coincidentally, 9 in the Ninth Circuit) test according to the jury instruction on the court's website:
(1) Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark.
(2) Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.
(3) Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar.]
(4) Actual Confusion. If use by the defendant of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.
(5) Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion.
(6) Marketing/Advertising Channels. If the plaintiff’s and defendant’s [goods] [services] are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.
(7) Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and defendant’s trademarks.
(8) Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion.
[(9) Other Factors.
Insert any other factors that bear on likelihood of confusion.]
I doubt Stone will be able to prove Keystone's intent to confuse, but who knows at this point. There may or not be actual confusion by consumers. It will be interesting to follow and see how Keystone responds.
I agree it's wise of Stone to sue to protect (or risk being "estopped" as the lawyers say, from doing so later) its trademark. Let's see what happens. Does Stone prove its case, does Keystone settle, or does a jury decide whether Stone are just a bunch of Arrogant Bastards?
