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Cease-and-Desist Letters? South Florida Breweries Could Be Affected

Starbucks sent a cease-and-desist letter to Exit 6 Pub and Brewery in Cottleville, MO earlier this month after the mega-corporation discovered that one of the brewpub's customers named a beer 'frappicino'.

The discovery was made by the coffee giant after searching the website, Untappd, a social network for beer drinkers. The brewery's owner, Jeff Britton, sent a letter to Starbucks's lawyers in response, sarcastically stating that he will never use their ilk ever again, along with a check for $6 for using their trademark that he refers to as "the F-word".

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As the beer industry continues to grow in the United States, c&d letters are likely to increase. Ross Appel, a small business attorney who also specializes in brewery trademarks with Komlossy Law P.A. in Hollywood, says this is not an uncommon thing.

Cease-and-desist letters are a common tactic among businesses to eliminate any confusion over the source of a product. For instance, Starbucks likely sent the letter thinking that people will begin to confuse the 'frappicino' beer as one of their products instead of the brewpub's. Yet, comparing coffee to beer is like comparing apples to oranges. Appel believes the brewpub was not likely infringing upon Starbucks's trademark since the coffee company does not produce any alcoholic beverages.

"The idea is to police your mark," Appel said. "Use it or lose it. It's something that needs to be done if there is a potentially infringing situation."

Advertising and sales is argument that Britton could use in court to defend use of the F-word, if he felt so inclined to do so and if he had the vast amount of money and resources available to Starbucks, which he obviously does not. But instead of duking it out in court with a Goliath, it's much easier for the David's of the world to just play it safe and comply with them. Whether or not Exit 6 was infringing or if Starbucks was coming off as a trademark bully, the philosophy is to defend the mark.

"I just thought it was funny this giant corporation was spending all this money on lawyers for me," Britton told the Riverfront Times, the New Times' sister paper in St. Louis. "I wish that I had the money to shit away on lawyers like Starbucks does."

A more common (and one might say legitimate) instance of copyright infringement is when two separate companies in the same industry have have similar names or similarly named products. South Florida breweries are not entirely unaffected.

A situation like this arose about a year ago. Formerly known as Most Wanted Brewing, MIA Brewing changed its name due to a distillery known as High Plains in Kansas sells a vodka with the same name. Even though the High Plains owners reportedly did not have a problem, an infringing situation could occur at a later time if the owners had a change in heart or if the company changed hands.

Also, an issue over trademarks came up last year between brewing companies in Miami. One company known as Miami Beer Company sought to trademark its name but couldn't since the U.S. Patent and Trademark Office do not allow trademarks on geographically descriptive terms, like Miami. Miami Brewing Company, which is affiliated with Schnebly Redland's Winery in South Miami-Dade, tried to do register its mark as well but couldn't because of the same aforementioned reason.

Miami Beer Company tried to appeal the USPTO's rejection, arguing that Miami refers to several different locations, not just one, but the agency wouldn't have it. And even though Miami Brewing filed a trademark application after MBC's, they will most likely receive a supplemental trademark because the company began selling its product before Miami Beer Company.

When a company files for a trademark, they will be assigned an examining attorney from the USPTO who conducts research to see if it's similar to other registered marks or if the term is too common or if it is geographically descriptive.

Generally, a company with a geographically descriptive trademark can re-file for a principal trademark after it has been selling its product for five consecutive years. This happened with Brooklyn Brewery. Otherwise, the trademark is placed on a supplemental registry, which means that the company can keep the mark, but it will not receive the legal protections from a principal registry. According to Appel, trademarks containing the ® next to it could indicate a supplemental registry but usually are meant to warn other companies to not use that mark.

Other than Miami Brewing, several other breweries in Florida are, or were, placed on the USPTO supplemental trademark registry. They include Wynwood Brewing and Florida Beer companies. Cigar City Brewing was refused a principal registration because the term 'Cigar City' is a geographic reference to Tampa. They are currently fighting to get on the supplemental registry.

"When it comes to geographic trademarks; you can't have exclusive rights because it could exclude other vendors who want to use the name for their company," Appel said.

The same goes for names of products too, like any product that could be named "Miami Pale Ale" or "Wynwood Stout".

And then there is the potential issue between Miami Brewing Company and MIA Brewing, since some could see MIA as referring to Miami. However the trademark for MIA Brewing, a company that started at least a year after the former, was filed with periods in between the letters and could refer to something other than the city.

Trademark bullying, defending the mark, business as usual or whatever you want to call it, cease-and-desist letters are an effective method for businesses to protect their trademarks.

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David Minsky is U.S. Navy veteran and Tulane graduate who has experience reporting on stories from California, South Florida, and the Deep South. He also won some journalism awards. Email or tweet David with story tips and ideas.
Contact: David Minsky

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