You will recall that we have been discussing a trademark suit between Sycamore Brewing and Stone Brewing recently. As you can see in images in the post we did about the lawsuit, and then the follow up post on the battle over an injunction requiring Stone Brewing to sticker over the offending branding, it’s pretty clear that this constituted trademark infringement. Part of what made this story noteworthy is that Stone Brewing has, for years, represented itself as a craft brewer ready to take on the big breweries on matters of intellectual property, as though it were some paragon of the industry. Instead, Stone Brewery appears to have turned to both trademark trollingand trademark infringer of smaller breweries.
The settlement came last week, shortly after Stone Brewing filed a countersuit against Sycamore calling its legal action a “sham.” The Escondido craft beer maker claimed that Sycamore didn’t disclose to the court — nor apparently to the U.S. Patent and Trademark Office —that a different brewery with distribution in 14 states has been using the phrase “Keep It Juicy” on its IPA beer cans since 2017.
That’s three years before Sycamore registered to trademark the tagline, which was granted in August 2021, according to Stone. The brewery contends this prior use of “Keep It Juicy” raises serious doubts over the trademark’s validity.
Now, serious doubts do not equal “sham”, of course, but I suppose such accusations are now moot. The case has settled. The post I linked to references that the preliminary injunction has been lifted, but doesn’t seem to detail out whether the agreement includes Stone’s promise to no longer use the trademarked slogan and dress of Sycamore Brewing. It is my understanding that the settlement does include that however, making this a win for Sycamore.
Stone Brewing, annoyingly, is back to playing the victim here.
“While we are relieved this case is over, we feel it’s necessary to set the record straight,” said Stone Brewing Chief Executive Maria Stipp. “Sycamore forced Stone to incur hundreds of thousands of dollars in legal expense to defend ourselves and sent our team scrambling to sticker 21,000 boxes of beer in warehouses across the country taking more than 600 hours of valuable time. As we now know, all of this was because of Sycamore’s baseless trademark claims and opportunism.”
… said the company that successfully sued Molson Coors for making the “stone” part of “Keystone” beer’s label really big. Seriously, go review that case; it’s pretty much all there was.
This case was much more striking in terms of the use of another’s registered trademark. I frankly don’t remember David being so petulant after slaying Goliath.
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.
Well, this one is moving fast. It was only a few days ago that we talked about a lawsuit filed by Sycamore Brewing against Stone Brewing for what sure looked like a pretty blatant ripoff of the former’s trademarked slogan, “Keep It Juicy”. What made this story notable was that Stone Brewing is just coming off a large win in court against Molson Coors over a rebrand of Molson’s Keystone beer trade dress. In that fight, as it often does to anyone who will listen, Stone Brewing made a bunch of noise about how it was the protector of the craft beer industry and billed its $56 million win over Molson as a David vs. Goliath scenario. And, yet, here was David turning around and simply ripping off a smaller brewery’s trademark.
Sycamore’s filing both struck out at the story that Stone likes to tell for itself, but also brought the goods. The side by side comparison of the uses in question tell pretty much the entire story.
For that reason, the case seemed like a winner to me. I did not, however, expect that a little over a week later a judge would go so far as to force Stone Brewing to cover up the infringing slogan on all unsold products while litigation continues. Marc Randazza got this win representing Sycamore.
[Judge Frank] Whitney ruled that Stone Brewery is allowed to sell the rest of the current Stone “juicy” beer already out in the market with the branding “Keep It Juicy” on the box. However, Whitney said Stone Brewery must cover up the labels on boxes with white labels to ensure there will not be any sort of “consumer confusion.”
Randazza asked for more, including the removal of the product from stores rather than allowing it to be sold, but this is still a significant order from the court. Again, the trial hasn’t even started yet, though if the case gets that far, it is anticipated it will start sometime over the summer.
The immediate question that leaps to mind is just how much of that Keystone money Stone Brewing is going to get to keep, or will some of it be needed to pay Sycamore Brewing.
You may have heard that Stone Brewing Co., once a scion and protector of the craft beer industry, won a trademark lawsuit against Molson Coors due to the latter’s rebranding of its “Keystone” brand to more prominently feature the word “STONE” on cans and labels. We didn’t write about the case, though that doesn’t mean I didn’t have opinions on the matter. Frankly, I found the whole thing quite silly. Craft beer buyers, or fans of Stone Brewing, weren’t suddenly going to think that a Keystone beer was from Stone Brewing because it had a big “STONE” on the can. Especially when the word “KEY” was still on the labels and the rest of the trade dress was notably different. And, yet, a jury awarded Stone Brewing $56 million for this “infringement.”
What is notable about all of that is that Stone Brewing publicized the win by claiming that it was a craft brewer fighting a big, evil macrobrewery. Evil was a word the company specifically used. Stone has also long touted itself as a stalwart force against big, evil companies in the beer space. And that’s something Sycamore Brewing decided to highlight in its lawsuit against Stone Brewing for what sure looks like an absolute blatant infringement of Sycamore’s very valid trademarks.
How blatant? Well, Sycamore makes Juiciness IPA and has a registered trademark on the beer’s slogan: KEEP IT JUICY. That was established in 2020. And, yet, Stone Brewing, protectors of all things the little guy and trademarks, did this:
The imagery on the right is featured very prominently on Stone’s Hazy IPA brand, both on the beer packaging as well as on the brewery’s website. I’m not usually on the side shouting about real infringement on trademark issues, never-mind in the beer industry, but here we are. These are two companies that are operating in the same geographical markets, in the same market type, and the use is blatantly infringing. It’s the same slogan. Even the style in its delivery are quite similar. Unless Stone manages to somehow unearth a hitherto unseen trademark registration for the phrase that existed prior to Sycamore’s, this appears to be as open and shut as it gets in trademark law.
What gets more interesting is how the legal team for Sycamore used its lawsuit to absolutely torch Stone Brewing for its hypocritical IP practices.
Stone is a craft beer pioneer. Every craft brewery in the world owes a debt to Stone for evangelizing craft beer at a time when most of the United States thought beer choices extended no further than Budweiser and Coors. To say Stone has helped invent the modern craft beer experience is in no way a stretch. Stone innovated beer styles that are still used by nearly every brewery on the planet. It afforded new breweries visions of themselves unbound from the limitations of “micro” and enlightened by a consumer exploring the vastness of “craft.”
But, as Stone grew larger and larger, it lost its way. While it used to preach the gospel of “community” in craft beer, it now seeks to damage smaller breweries by filing questionable trademark actions against them and to steal the trademarks of those smaller breweries it believes will not fight back. Sycamore is fighting back. Stone stole Sycamore’s registered KEEP IT JUICY trademark. Unlike the dubious trademark disputes Stone initiates, this case is based upon an actual trademark inarguably owned by Sycamore that Stone is using for the exact same purpose in the exact same markets. So, Sycamore will fight to maintain ownership of its trademark and brand. And, as it does so, it hopes to remind Stone that its existence used to be good for the craft beer industry before Stone decided that competition and innovation were things to damage, not celebrate.
As far as polemic prose goes in a legal filing, that’s about as good as it gets. And it is sadly true, but also a good medium for a craft brewery to whip up public support against the story that a trademark bully likes to tell the public. Stone isn’t a champion of the craft brewing industry and hasn’t been for a long, long time. It can couch its win against Molson Coors as a David v. Goliath scenario all it wants, but it’s a half-truth at best.
And, as always, if you’re going to live by the IP bully, you can die by the IP bully as well.
