from the loosey-juicy dept
Now this one surprises me. We’ve been talking recently about a trademark infringement suit brought against Stone Brewing by Sycamore Brewing, a much smaller brewery. Fresh off a massive win against Molson Coors over its decision to alter the branding for Key Stone beer to feature the word “stone” in very big letters, Stone Brewing found itself on the other side of a lawsuit. Sycamore has a registered trademark on the slogan “Keep It Juicy” for one of its beers… and Stone Brewing recently began using that same slogan in a style that is, well, extremely similar to that of Sycamore’s usage. How similar? Well…
Like I said, pretty similar as far as these disputes tend to go. Same words, similar font styles and layout, etc. In fact, this all seemed egregious enough that Sycamore’s lawyer, Marc Randazza, managed to win a preliminary injunction from the court, which ordered Stone to sticker-over the slogan on its packaging if it were to continue selling cases of the beer. As far as remedies go, this seemed like a reasonable middle ground, which, well… more on that later.
But Stone has decided to fight the injunction, requesting a stay on it while the two sides continue to battle the infringement case in the courts. Sycamore has responded opposing the stay request. There’s a lot going on in both documents, only some of which I’ll highlight, but you can read both embedded below.
On Stone’s motion to stay, here are a couple of highlights so you know what’s going on. First, Stone indicates that the court’s order to sticker-over the offending slogan on its packaging represents an “enormous burden” to the company. This is mostly referring to the fact that Stone would have to work with its downstream partners and/or retailers to do the stickering and to concerns over what this would do to its reputation.
Beyond the actual labor involved, it is enormously disruptive to Stone’s business operations (whose personnel have been required to shift their attention away from their ordinary responsibilities) and to the business operations of the non-party distributors and retailers with whom Stone contracts. (Id. ¶¶ 4-9.) Stone’s relationships with its distributors is critical to its business success, and demanding that they and their retailers commit significant resources to assist Stone in complying with the Injunction strains those crucial relationships, causing unquantifiable harm to Stone’s business and reputation.
The reputational issues here seem rather silly, given that it was Stone’s use of another’s trademark that is causing all of this action. And, while I have yet to see any attempt by Stone to invalidate Sycamore’s registered mark, Stone plays a shell game throughout its motion when it comes to the nature of the trademark in question. It makes a great deal of noise about how the term “juicy” is generic to the craft beer industry, which it is, before later in the filing deftly referring to the full slogan “Keep It Juicy” as generic as well, which it very much is not. Further down, it attempts to switch to branding “Keep It Juicy” as “descriptive words”. In the realm of trademarks, the slogan is not descriptive in the manner in which the filing hints. For example, the following assertions are merely two paragraphs apart.
In March 2022, Stone switched to a different type of box which had a half-height flap that folded down from the top and a second flap that folded up from the bottom. (A-112.) Stone shrunk the image of the can so that it fit on the top flap, and used the descriptive words “Keep It Juicy” to fill in the otherwise-empty space on the bottom flap.
Stone used the term “juicy,” as many other breweries have done, because it captures the particular characteristics of this IPA, and its personnel selected the (very common) phrase “Keep It Juicy” entirely independently of any Sycamore tagline.
It’s like the filing can’t keep straight how it actually wants to position its usage. Like I said, there’s more going on in the filing as well: claims Sycamore won’t be harmed by a stay in the injunction, claims that it had to file for the stay outside of the District Court in which the larger case is being heard (mostly because it didn’t get the decision it wanted on the initial injunction), etc.
Sycamore’s rebuttal has plenty in it as well. But let’s get right at the heart of the “more on that later” hints I keep issuing. A massive part of Stone’s request for a motion to stay is predicated on the enormous burden it would put on the company and its reputational harm with distributors. There are two problems with that. For starters, Stone claimed it would take roughly 80 minutes per sticker application to each instance of its packaging. That’s pretty silly on its face. But, more to the point, Stone also failed to disclose that nearly half the product in question is sold in California, where the distribution is done by Stone directly.
Stone claims that stickering will hurt its relationship with its distributors. However, Stone fails to disclose that Stone distributes its own product in much of California. Id. at ¶¶28-30. Why would Stone get angry at Stone and discontinue Stone products because Stone was being compelled to do precisely what Stone’s own counsel asked the Court to let it do? Stone could sticker every box, at least in its self distribution area, within 24 hours, if it wanted to.
Second, and this is sort of a big one: stickering over the offending logo was Stone Brewing’s idea.
On April 20, 2022, the District Court orally granted the preliminary injunction. A-306 at 58:9-21. However, at the hearing, Stone’s counsel asked that the Court modify the initial injunction – to permit Stone to place stickers over the infringement rather than simply pulling all infringing product from shelves.
In other words, in one court Stone Brewing requested the stickering process, while in another claiming that such a process is an extreme burden on the company. Can’t do that.
Again, there’s more in Sycamore’s filing: Stone introducing new evidence to stay the injunction, challenging the stay in a separate/new court, claims that actual confusion must be shown for an injunction being incorrect, etc. It’s a fairly thorough takedown of a stay request from Stone that to this writer’s eye appears to be quite silly.
It’s a new court, so we’ll wait to get a decision. But regarding the overarching infringement case, this one still feels pretty cut and dry as far as trademark cases go.
Filed Under: descriptive, keep it juicy, trademark
Companies: stone brewing, sycamore brewing