The legal battle over a local brewery’s name is heating up.
Massachusetts-based Strange Brew last week asked Richmond federal court to forbid Strangeways Brewing, which opened this summer in Henrico, from continued use of its “Strangeways Brewing” name.
The out-of-town home-brewing equipment supplier alleges that the Strangeways name is “confusingly similar” to the trademarked “Strange Brew” and that its use has caused the Massachusetts firm to lose sales on beer products.
Strange Brew owner Brian Powers made the arguments in response to a complaint filed in July by Burton Brewing LLC, which operates Strangeways. In the initial suit, Strangeways requested cancelation of Strange Brew’s trademark.
The parties have been at odds over the names since May, when Strange Brew opposed Strangeways founder Neil Burton’s application for a trademark with the U.S. Patent and Trademark Office.
Strange Brew alleges in its 20-page response that Burton Brewing chose the Strangeways name with the intention of profiting from the reputation of the Strange Brew name, which “carries great weight with beer drinkers, home brewers and beer suppliers.” The response included counterclaims against Strangeways, alleging trademark infringement, unfair competition and dilution of famous marks.
Maya Eckstein, a Hunton & Williams lawyer representing Burton Brewing, said in an email that Powers’s suit is without merit. Burton could not be reached by press time.
Powers is represented locally by Alexander Ayers and Mark Schmidt of Ayers & Stolte. Powers did not return a phone message Tuesday.
The dispute centers on two trademarks, one issued to Powers for “Strange Brew” in 2007 and the “Strangeways Brewing” trademark Burton applied for last year.
Burton’s application was published in January by the U.S. Patent and Trademark Office. Strange Brew filed an opposition to the pending application four months later, arguing that the Strangeways name would “likely would confuse, deceive, or cause mistake amongst consumers,” thereby diluting Strange Brew’s mark.
Burton then launched a preemptive strike to protect his brewery’s name by filing suit in Richmond federal court. His suit, filed July 30, asked that “Strangeways Brewing” be trademarked without further objection from Strange Brew.
Burton’s suit also argued that the “Strange Brew” mark should be canceled, alleging the company has not used the name in connection with a beer product and “never had the required licenses to make/and or sell finished beer” aside from two separate one-day liquor licenses. In its response, filed Sept. 27, Strange Brew denied that claim.
“Strange Brew” is trademarked in two classes recognized by the USPTO: once as a beer product and again as a retail store selling beer- and wine-making supplies. Burton has only applied for a trademark in the beer category and has not contested Strange Brew’s trademark in the retail class.
Burton Brewing has pending applications to trademark “Strangeways Brewing” and the brand’s slogan “Think Strange, Drink Strange.” Strange Brew has not opposed the “Think Strange, Drink Strange” application. The parties have halted proceedings with the trademark office pending civil litigation.
ThompsonMcMullan attorney Zac Cohen, who last year formed a beverage practice group aimed at helping breweries cross business hurdles, said the response from Strange Brew is a standard filing in this type of proceeding.
“They’ve kind of said they’re not going to roll over and play dead, but it doesn’t mean they won’t settle,” Cohen said. “I would still be surprised if this goes to trial, but you never know.”
If the two parties do not settle, Cohen said, a number of factors would come into play in judging the dispute, including the similarity of the two marks, the sophistication of the brands’ customers and whether Strange Brew can show any cases of actual confusion between the two marks.
Strangeways opened its brewery and tasting room on Dabney Road in Henrico County in May. In a June interview, Burton told BizSense he took inspiration for his brewery’s name from “Strangeways, Here We Come,” an album by 1980s British rock band “The Smiths.”