• IP BLAWG

    When a Friendly Beer Turns Unfriendly

    Beverly A. Berneman
    10/13/20

    Brooklyn Brewery (“Brewery”) has been around for more than 30 years. Brewery sells craft beers all over the country. Brooklyn Brew Shop (“Brew Shop”) was founded in 2009 and sells beer brewing kits.

    In 2010, Brewery started receiving calls from customers trying to reach Brew Shop. So Brewery emailed Brew Shop about it and suggested that Brew Shop “keep an eye on it”.

    Apparently, neither side was too worried about customer confusion at that time. Brewery and Brew Shop started collaborating on projects related to beer making, including co-branded beer-making kits, promotional events, books on beer making and educational beer making programs.

    It was a match made in beer heaven. Until May 2015.

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  • IP BLAWG

    If You See Something

    Beverly A. Berneman
    8/28/18

    Don’t wait too long to protect your trademark. %CUT% Since the 1990s, Cosmetic Warriors Ltd. sells “Lush” brand personal products like soap, lotions and makeup. For a brief period, Cosmetic Warriors sold a small number of t-shirts. But for the most part, Cosmetic Warriors does not sell clothing. Pinkette Clothing, Inc. started selling clothing using the brand name “Lush” in 2003. In 2009, Pinkette applied to register the trademark and it was registered in 2010. Cosmetic Warriors didn’t contest the registration. Almost 5 years after the registration of Pinkette’s trademark, Cosmetic Warriors sued Pinkette for trademark infringement. Cosmetic Warriors said that it didn’t know about the registration to explain why it waited so long to bring suit. Cosmetic Warriors won the battle but not the war. A jury sided with Cosmetic Warriors on the infringement issue. But then the jury sided with Pinkette on Pinkette’s argument that Cosmetic Warriors was barred by laches because it waited too long to bring suit. The jury’s verdict was upheld on appeal.

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