Trademark dispute: Two Missouri craft brewers and a light bulb image

With 4,600+ craft breweries, and with only so many hop puns that are mathematically possible, trademark issues are inevitable. Luckily, many of these disputes are never made public as the principles involved talk it out and come to an understanding. This is not one of those times. We turn to St. Louis, where Side Project Brewing (a small-batch brewery that opened in 2013) is suing Modern Brewery over its use of a light bulb logo (opened in 2014).

From the filing:

This is an action for trademark infringement to stop Modern from further trading upon Side Project’s rights in its marks SIDE PROJECT and design marks featuring a light bulb for beer and related goods and services. Injunctive relief, among other remedies, is necessary because Modern adopted confusingly similar light bulb imagery for identical goods and services without regard to Side Project’s senior rights. Modern has embarked on a recent and rapid expansion of its use and visible presence under the accused design marks, and has done so despite objections by Side Project.

Here are the light bulbs:

These aren’t necessarily similar in look, but remember these are small breweries competing in the same market. So, both of them using something so specific, like a light bulb, could easily create marketplace confusion.

According to the lawsuit filing, there is a lot of history here. The two breweries were planning their launches around the same time and had conversations prior to launching about the use of the light bulb.

The challenge in this case, reading through the lawsuit, is figuring out exactly what happened when, as both breweries have been discussing the use of a light bulb in their marketing since before both opened their doors. Both obviously claim to be the originators who have the right to use it. There’s even a side story in the documents about Modern Brewery registering “Side Project Brewing and Brewery LLC” with Missouri’s Secretary of State prior to Side Project Brewing officially opening (and on the same day that Cory King, Side Project owner, tweeted out his company’s logo). Side Project’s trademark registration for a light bulb logo design was filed with the U.S. Patent and Trademark Office in May 2013.

Between in 2013 and today, there seems to have been a lot of back and forth between the two breweries. According to the filing, a letter dated May 22, 2014, shows Side Project putting Modern on notice that Modern’s “use of a light bulb design in connection with beer and related goods and services is likely to cause consumer confusion in violation of Side Project’s prior and superior rights.” The Parties continued discussions in an effort to reach an amicable resolution, but no resolution of the dispute was reached. And so here we are.

Some notes from the St. Louis Dispatch article:

“On day one when we launched, that’s when [Beamer Eisele, Modern Brewery owner] approached us and said they were using a light bulb,” King told the Post-Dispatch. “He was fully aware of our light bulb, our usage and our trademark long before he proceeded to start using their light bulb.”

King claims that Eisele registered a company under the name of Side Project as a form of leverage.

Eisele obviously has a different memory of the chain of events, according to the St. Louis Dispatch story:

“I made my plans clear to him and developed my light bulb design at least two years before he first used his,” Eisele’s email said. “I have the documentation to prove all of this. … (King) knew I was planning to use a light bulb design long before he decided to use one.”

He also denied that he or The Modern Brewery registered the Side Project Brewing and Brewery name with the state.

However, Eisele’s father, Philip M. Eisele, is the registered agent on the March 2013 articles of incorporation for the Side Project Brewing and Brewery LLC, according to records with the Missouri Secretary of State.

We end with a reminder of all of our great trademark advice. Might be time for a brush up to make sure you are protected and doing things the right way.

What is trade dress? And why is it an important trademark opportunity for brewers

Choosing your craft beer brand names: Trademark law, part I

Choosing your craft beer brand names, part II: Trademark clearance

Craft beer trademarks, part III: Tips for filing the paperwork

Common craft beer trademark rejections, and how to respond

How to defend your craft beer trademarks

Craft beer trademarks: Likelihood of confusion