In 2011 Marble Brewery, a microbrewery from Albuquerque NM, brought a lawsuit against Knoxville, Tennessee’s Marble City Brewing Company for trademark infringement. Here is the story, with lessons to be learned.
Marble Brewery began operation in 2007, producing, packaging and distributing their handcrafted beers in their taproom, with plans for widespread distribution. In good practice, the brewery federally trademarked the word “Marble,” protecting their brand identity from potential infringement. As Marble Brewery geared up for national distribution in 2009, it was brought to their attention that another brewery was planning to open a similar operation under the name Marble City Brewing Company.
Marble Brewery quickly contacted the owner of Marble City Brewing in Knoxville about potential trademark infringement, and was met with a refusal to change the name because it was “too late.” Marble City Brewing continued moving forward with their operation, and even attempted to trademark the Marble City Brewing Co. name. The attempt was rejected by the United States Patent and Trademark Office based on the existing trademark Marble Brewery already had, citing “confusion in the marketplace.” Despite this, Marble City Brewing Co. proceeded to move forward. This prompted Marble Brewery to take action, sending a “cease and desist” letter to the owner of Marble City Brewing Co. in order to protect their trademarked name.
Even with cautioning discussions and the cease and desist letter, Marble City Brewing Co. carried on and began releasing beer in 2011 under the same name. As a result, Marble Brewery sued to prevent trademark infringement. Eventually, the parties reached an agreement through mediation, and Marble City Brewing Co. changed its name to Saw Works Brewing Company.
Merely telling this story could cause confusion due to similarities between the names. While the names DO differ and the logos are independent of each other, the issue is confusion in the marketplace. The names are so alike that someone looking for Marble Brewery beer might pick up a Marble City Brewing Co beer instead, or vice versa. This is where the protection of trademark or copyright will save your business and make sure it is represented correctly.
The lessons here are seemingly obvious, but were ignored by former Marble City Brewing Co. Do your homework. Norris Law Firm P.C. can help you find out if the name you’ll use for your brand is available, and secure it by registering a trademark. There is no telling exactly how expensive this legal battle between Marble Brewery and Marble City Brewing Co was, but we do know it was significant and could have been avoided. Norris Law Firm P.C. has the experience and knowledge to guide you through the financially efficient steps to secure your brand.
A trademark protects your brand; names, words, symbols, sounds or colors related to your goods and services that are distinguishable from those made or sold by others. A federally registered trademark provides your business with specific benefits that protect these brand assets from other business entities.
There are a lot of moving parts in this process, and navigating through can be overwhelming and tricky. Despite all of this, it is imperative to secure what you own now, so your business is protected when you need it.
Obtaining a trademark early on will save you money down the line, especially if you have to defend your brand ownership in court. There are plenty of lessons to be learned from companies that waited too long to trademark their brand. A lesson on brand protection can be found in SawWorks Brewing’s trademark story. Check out our article: Marble City Brewing: A Tale of Trademark Infringement
Norris Law Firm P.C. has the experience to guide you through the trademarking process, so that you can focus on running your business.Let's get started