(Allentown, PA) – Troegs Brewery is requesting that the USPTO cancel The Brew Works’ registration for TBW’s Rude Elf’s Reserve beer due to similarity to its own registered Mad Elf beer. This morning, The Brew Works sent out a press release regarding the case.
The latest development in this case is that the two parties have requested confidentiality as it proceeds in its upcoming phases so this press release comes as a bit of a surprise. Here’s the statement followed by my new disclaimer/summary regarding trademarks disputes…
Due to the overwhelming number of requests for comments about our Trademark of Rude Elf’s Reserve, The Brew Works is offering the following Statement:
Five years after the registration for Fegley’s Brew Works RUDE ELF’S RESERVE issued, Troegs is trying to take the registration away, asking the US Trademark Office to invalidate it.
In so doing, Troegs seeks to monopolize the word elf in advertising its beer. We do not think the law recognizes such exclusivity and believe other brewers who have used elves longer than Troegs and have not complained about each others’ or Fegley’s use will also take part in preserving their rights.
Troegs must prove a likelihood of consumer confusion, that is, that consumers believe Fegley’s products are associated with, endorsed by or originate with Troegs. Under the trademark law, likelihood of confusion depends on many factors including the similarity of the marks in appearance and overall commercial impression and the strength of the complainant’s mark. A mark’s strength in turn depends on the number of third parties in the marketplace using the same or similar designations as those in dispute. Here the parties’ brands have only a single term in common, “elf” . There is a long tradition in this country of using the terms “elf” or “elves” in connection with holiday beers, ales and lagers. In addition to the parties in this litigation there are at least one dozen beers produced by other parties including Shelton Brothers and La Chouffe that use the term elf and/or elf imagery. Of the (at least) one dozen parties offering beers, a single producer, Shelton, sells six of them under the mark BAD ELF and variations thereof.
Under the circumstances, we believe consumers are readily able to differentiate among different “elf” beers and do not associate the term “elf” with any single beer producer. Therefore we think consumers are not likely to believe any party’s beer including the term elf, is related to any other beer that includes this term. Moreover on the labels and cases for their respective products, both parties use their house names (Fegley’s Brew Works and Troegs), Troegs uses additional words to describe the flavor of its beer, and Fegley also uses the word “Reserve”; also the parties’ illustrations of elves simply look different. These factors further support that there is not likely to be consumer confusion.
Moreover the marks on the labels and cases for their respective products are very different. Fegley’s filed an application for the Trade Mark of “Rude Elf’s Reserve” on June 21st 2004 with the following elf image (shown below), on all of their beer labels for sale.
At same time of Fegley’s original filing in 2004, the only Troeg’s mark of Record was the image (shown above) and the name…
“THE MAD ELF TROEGS HOLIDAY ALE BREWED WITH HONEY, CHERRIES & CHOCOLATE MALTS“.
As these images make clear, both parties use their house names (Fegley’s Brew Works and Troegs), Troegs uses additional words to describe the flavor of its beer, and Fegley also uses the word “Reserve”; and the parties’ illustrations of elves simply look different. These factors further support that there is not likely to be consumer confusion.
For additional information please visit these links of public record with the US Patent and Trade office
1. Rude Elf’s Reserve Mark filed June 21st 2004: http://tarr.uspto.gov/servlet/tarr?regser=registration&entry=3047757
2. Other Elf mark: http://tarr.uspto.gov/servlet/tarr?regser=registration&entry=2887242
3. Official Petition information: http://ttabvue.uspto.gov/ttabvue/v?qt=adv&procstatus=All&pno=&propno=&qs=&propnameop=&propname=Rude+Elf&pop=&pn=&pop2=&pn2=&cop=&cn=
Two examples (of more than a dozen) other Elf beers
A note about trademark law:
The point of this summary is to provide some context around stories like this one. Please take a moment to educate yourself about the basics of trademarks and trademark disputes (like visiting the USPTO website for instance) before making snap judgments on either side. Here’s my best shot at a back-of-the-napkin summary:
To clear up a couple common misconceptions that I’ve seen with respect to these trademark disputes:
A) these stories have nothing to do with copyrights,
B) sending a cease and desist letter 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 a mark.
That last one is a little less straightforward so I will explain. In the example of Troegs vs. The Brew Works, Troegs is not claiming to own the rights to the “Mad Elf” mark as it pertains to computers or automobiles or other goods. The brewery is only claiming rights to the mark as it pertains to beers. With the case of The Lost Abbey vs. Moylan’s, Lost Abbey is only claiming to own rights to the Celtic Cross mark as it pertains to tap handles (IIRC). This is why, for example, you see the name, “Monster,” on a number of goods including energy drinks, beers, electronics, etc. and it is usually within the boundaries of the law. Companies may still oppose similar marks of other companies across classes of goods.
Trademark law says that companies either protect these marks or risk losing them. The more common the incidence of a mark in a class of goods, the more likely it is that the mark could be seen as too generic. I suspect that the reason that Brooklyn Brewery abandoned its application to trademark the name, “Monster Ale,” several years ago is because there are many beers out there donning the name, “Monster,” so Brooklyn didn’t have a valid filing basis (I could be wrong).
That said, those who respond to these disputes by using blanket arguments such as, “breweries don’t sue each other,” or “breweries must defend their trademarks” are ignoring the unique circumstances that surround each case. Some warrant legal action and some do not. It is rarely as black and white as many make it out to be which is partly why lawyers are paid lots of money to handle these matters.
I don’t know of a single brewery that trademarks all of its beers and I know of dozens of breweries that don’t bother trademarking even their flagship beers. Why? There are costs and benefits to registering a mark. Production at Brooklyn Brewery has nearly doubled since 2005 and Brooklyn is still firmly planted among the top 25 regional breweries in the country in terms of size. You would have to ask Brewery President, Steve Hindy, what value his company has lost for not having a trademark for Monster Ale. Like I said…it’s debatable.
While we’re at it, here’s a good discussion on the circumstances around the Bell’s/Northern Brewer situation.