Second Circuit Case Provides Insight to Beer Trademark Protection Strategy

Oregon Brewing Company has been producing Rogue Ale since the 1980’s and has sold Rogue-branded T-shirts, sweatshirts, and hats for just as long. Beginning in 2000, a clothing company called Excelled Sheepskin & Leather Coat Corp. began a high-end “Rogue” leather jacket clothing line that it sold in department stores.

With the popularity of craft beer, the brewery began selling its branded shirts and clothing in department stores. Then, the leather jacket line expanded into T-shirts.

Who was infringing who? The federal court found that the brewery was the first to use the Rogue mark with clothing, but the clothing company was the first to sell in the trade channel (department stores). The brewery’s trademark registration only claimed clothing in limited trade channels to support its beer brand and sales.

This will not be an easy case to decide when it comes to first use. The decision will clarify if it is first use of the mark in the goods and services class or in the trade channel that establishes priority as senior user. The takeaways for craft brewery owners:

  1. Strongly consider clearing your mark in the clothing goods category.
  2. Strongly consider registering your mark in both the beer and clothing categories.
  3. Regularly review your trademark registrations to identify if any need to be expanded to cover current business activity if you expand beyond beer production.
  4. Consider a watch service to police your mark to identify a new market entrant that could compromise your trademark protection or limit future expansion.

The case is Excelled Sheepskin & Leather Co v. Oregon Brewing Co, Case No. 16-3602 (2d Cir. 2017).