(Bethlehem, PA) – Another trademark dispute bubbles to the surface, this time between two Pennsylvania-based breweries…
[See updates below]
[Update II: I've removed "may go to court over" from the headline after receiving the following comment to this post. (I still have a lot to learn as well (clearly). Helpful summary of trademark law here).
This isn’t a lawsuit in the traditional sense. This is a cancellation proceeding before the Trademark Trial and Appeal Board in the US Patent and Trademark Office to get the Bethlehem’s mark canceled. The outcome of this proceeding in and of itself will not stop Bethlehem from continuing to use the mark. They just will not have the rights granted to a federally registered trademark holder. Troegs would have to file a a lawsuit in a court to force Bethlehem to stop using the mark.
It is worth noting for your readers that it isn’t about confusion as it relates to the actual products itself but the origin of the products.
Also, it should be noted that the standard for likelihood of confusion is not “whether Rude Elf has created confusion among Mad Elf customers over the last several years.” Actual confusion does not have to be shown. Even if actual confusion is shown, it still may not be sufficient for a finding of likelihood of confusion.]
[Update I: Before comments get out of hand again here or elsewhere, please take the time to educate yourself about trademark basics (like visiting the USPTO website for instance). To clear up a couple common misconceptions:
A) this has nothing to do with copyrights
B) sending a cease and desist is NOT the same thing as suing someone and
C) a trademark application requires that the filer identify a "class of goods" for which they are registering. Tröegs is not claiming to own "Mad Elf" as it pertains to computers or automobiles or other goods. The brewery is only claiming rights to the name as it pertains to beers. This is why, for example, you see the name, "Monster," on a number of goods including energy drinks, beers, electronics, etc.
In addition, trademark law dictates that companies protect these marks when infringed upon or risk losing them. That said, these situations are obviously not black and white which is what makes them interesting to debate in the first place.
Hope that helps...thanks!]
A press release came over the wire late this afternoon from BBW Press Relations Manager, Mike Fegley:
Bethlehem Brew Works, received a cease and desist letter just before Christmas, from the law offices of McNees Wallace & Nurick, representing Tröegs Brewing Company of Harrisburg Pa, concerning Fegley’s Rude Elf’s Reserve seasonal beer offering.
Tröegs claims Fegley’s trade mark for “Rude Elf’s Reserve” is a violation of Troeg’s mark “The Mad Elf Tröegs Holiday Ale brewed with Honey, Cherries & Chocolate Malt.” Further, Tröegs claims they own the rights to the word Elf and the image of an Elf in relation to all beer, ales and lager. Fegley disputes these charges and will vigorously defend the case.
The press release appears to be a move to put public pressure on Tröegs to drop the case before it moves into the discovery case the first week of April. What is the discovery phase, you ask? Courtesy of the Minnesota Judicial Branch:
“Discovery” is the process each party can use to learn what evidence the other side has about the dispute. The discovery process takes time, and can be expensive, intrusive and frustrating, especially if you do not have the help of an attorney. Discovery may not be needed in very simple cases, but both parties have a right to use discovery to get relevant information that the other party has about the facts of the case.
Earlier this month, BBW filed a formal response to Tröegs’ filing from January (you can read all of the filings which are attached below as PDFs).
Tröegs’ filing indicates that the brewery filed a trademark application relating to Mad Elf on November 27, 2002, and alleges first use in December. Tröegs filed a label registration application with the TTB on November 19, 2002.
As an aside, for any young breweries or brewery hopefuls wondering what they can learn from this, always register your labels with the TTB and/or state where it is required (which BBW/Fegley’s did in 2004) as it helps prove date of first use in the event that allegations such as these arise. A lot of breweries don’t file these at all due to the red tape involved.
I’m obviously no legal expert but it looks like this case will come down to whether Rude Elf has created confusion among Mad Elf customers over the last several years.
Both Fegley and Brewery President, Jeff Fegley, declined to comment. A phone call to Tröegs management was not immediately returned.