By Linda O’Brien, J.D., LL.M.
There was no genuine issue of material fact that an inventor of a home-brewed beer that was sold in two local bars had abandoned the use of the beer’s mark and logo after he ceased producing the beer in 2011. The inventor’s participation in a beer festival, application for a trademark, and sporadic efforts with various breweries between 2012 and 2017 were insufficient to overcome the presumption that he abandoned the use of the beer’s mark and logo, the federal district court in New Orleans has held. Thus, in an infringement suit, the defendants’ motions for summary judgment were granted (Ballero v. 727, Inc., September 22, 2017, Lemelle, I.).
In 2009, Frank Ballero began brewing a red ale beer known as "Pirate’s Blood" and developed a logo and mark for the beer. The beer was sold in various bars, including the Funky Pirate owned by 727, Inc. and Tropical Isle Bourbon owned by 721 Bourbon, Inc. Ballero ceased producing Pirate’s Blood in March 2011. The Funky Pirate and Tropical Isle Bourbon continued to sell a beer called Pirate’s Blood, using the same tap handle bearing the Pirate’s Blood logo and name, and telling customers that the beer was locally brewed. That beer was sold and distributed by Crescent Crown Distributing, LLC.
In November 2016, Ballero filed suit against 727, Inc., 721 Bourbon, Inc., and Crescent Crown, alleging claims for false designation of origin under the Lanham Act and unfair competition under the Louisiana Unfair Trade Practices Act (LUTPA). Ballero asserted that he met with various companies in 2012 through 2015 regarding the production and sale of Pirate’s Blood and that he intended to continue brewing and selling the beer under its trademarked name and logo. Before the court was the defendants’ motion for summary judgment.
Trademark infringement, false designation of origin. The court determined that there was no genuine issue of material fact whether the plaintiff abandoned the use of the Pirate’s Blood name and logo. A party asserting abandonment must establish that the owner of the mark both discontinued the use of the mark and intended not to resume its use. Further, under the Lanham Act, nonuse for three consecutive years shall be prima facie evidence of abandonment, the court explained.
Here, the court noted, Ballero admitted that he ceased production of Pirate’s Blood in March 2011 and did not advertise the beer at any time after April 2011. This was evidence that he discontinued use of the mark. Ballero had some interactions with breweries between 2012 and 2017. However, the evidence showed that he never scheduled formal meetings with any of the breweries, submitted a formal proposal about producing Pirate’s Blood, or negotiated any type of contract. None of those breweries produced the plaintiff’s beer for sale.
Ballero’s argument that his activities of entering his home-brewed Pirate’s Blood in a beer festival 2011 and 2012 and September 2014 application to trademark the Pirate’s Blood name and logo were evidence of his intent to resume use of the Pirate’s Blood mark and therefore created a genuine issue of material fact precluding summary judgment was rejected. The court noted that Ballero’s participation in a beer festival, filing a trademark application, and sporadic contacts with various breweries were insufficient to overcome the presumption of prior abandonment. The mere fact that Ballero did not intend to abandon the mark was insufficient as a matter of law, and no businessman intending to resume the commercial use of his mark would or should have allowed a six-year lapse to occur, the court stated.
The case is No. 2:16-cv-16098-ILRL-DEK.
Attorneys: : Brian Thomas Carr (Brian T. Carr & Associates) for Frank W. Ballero. Gregory D. Latham (Intellectual Property Consulting, LLC) for 727 Inc. and 721 Bourbon, Inc. Carl Edward Hellmers, III (Frilot LLC) for Crescent Crown Distributing, LLC.
Companies: 727 Inc.; 721 Bourbon, Inc.; Crescent Crown Distributing, LLC
MainStory: TopStory Trademark LouisianaNews
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