IP Law Daily Producer of BROOKLYN BLACK OPS beer halts California brewery’s sales of BLACK OPS beer
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Monday, January 11, 2016

Producer of BROOKLYN BLACK OPS beer halts California brewery’s sales of BLACK OPS beer

By Cheryl Beise, J.D.

The Federal district court in Sacramento has issued a preliminary injunction barring a California microbrewery from continuing to sell beer using the name “Black Ops.” The Brooklyn Brewery Corporation—owner of the registered mark “Brooklyn Black Ops”—was likely to succeed on its trademark infringement claims against Black Ops Brewing, Inc., according to the court (Brooklyn Brewery Corp. v. Black Ops Brewing, Inc., January 7, 2016, Burrell, G.).

The Brooklyn Brewery Corporation (BBC) has sold beer under the mark “Brooklyn Black Ops” since 2007. In 2009, it obtained a federal registration for “Brooklyn Black Ops,” in standard characters, for “beer.” BBC sold Brooklyn Black Ops beer in 27 states and was planning a launch of its products in California. BBC alleged that customers frequently referred to its beer as simply “Black Ops,” when purchasing it at restaurants, bars, and stores.

In 2015, Black Ops Brewing Inc. (BOBI) opened a brewery called “Black Ops Brewing,” which sold beer in restaurants and stores in Fresno County, California. On March 24, 2015, BOBI applied to register the mark “Black Ops Brewing” for beer and taproom services. The USPTO rejected BOBI’s application, based on likelihood of confusion with BBC’s previously registered mark.

In July 2015, BBC sent BOBI a letter demanding that it cease using the marks “Black Ops” and “Black Ops Brewing.” When BOBI refused to comply, BBC filed suit, asserting claims for trademark infringement under the Lanham Act and California law. Before the court was BBC’s motion for a preliminary injunction.

Likelihood of success. The court determined that BBC was likely to succeed on the merits of its trademark infringement claims based on a likelihood of confusion between BOBI’s use of “Black Ops Brewing” and BBC’s incontestable “Brooklyn Black Ops” mark. In particular, six of the seven Sleekcraft likelihood of confusion factors relevant to the case favored a finding of confusion: strength of BBC’s mark, similarity of the parties’ marks, goods, and marketing channels, degree of purchaser care, and BOBI’s intent. Only the absence of evidence of actual confusion weighed against a finding of confusion.

The court first found that BBC’s mark “Brooklyn Black Ops” was arbitrary and entitled to maximum protection. The court rejected BOBI’s assertion that BBC’s mark was descriptive because “Brooklyn” referred to the geographic location and brewery that produced the product, “Black” referred to a dark beer, and “Ops” was suggestive of hops, an ingredient in beer. BOBI improperly dissected BBC’s mark.

The court next found that the parties sold identical products: beer. In addition, the parties’ beer products were likely to be sold through the same channels of trade to consumers who were not likely to exercise great care in purchasing a common item such as beer. The parties also used similar promotional methods (including Facebook and their respective websites) to sell their beer. The court was not persuaded by BOBI’s argument that the parties’ beer products were dissimilar because, unlike its own IPA or blonde beers, BBC’s “Brooklyn Black Ops” beer product was a highly specialized type of aged Russian Imperial Stout (aged for four months in bourbon barrels, bottled flat, and re-fermented with Champagne yeast) that sold for $29.99 a bottle.

The court next determined that sound and the meaning of the parties’ marks were identical. BOBI pointed out several differences between the parties’ product labels, but the court did not accord much weight to the differences because “alcoholic beverages are often consumed in environments in which similarity in sound and meaning are likely to factor heavily in building consumer brand recognition and trademark association.”

Finally, while BOBI may have initially selected its mark in good faith, the court found that BOBI’s continued use of its mark after the USPTO’s rejection of its application negated any initial good faith.

The court concluded that BOBI’s use of the marks “Black Ops Brewing,” “Black Ops,” and “blackopsbrewery.com” created a likelihood that “the consuming public would be confused as to who makes what product.”

Other injunction factors. In addition BBC’s likelihood of success on its trademark infringement claims, the other three injunction factors favored granting relief to BBC. In particular, the court determined that: (1) BBC was likely to suffer irreparable harm absent an injunction because BBC would lose its ability to control its brand reputation and goodwill; (2) the balance of equities favored BBC because BOBI was only being restrained from unlawful infringement; and (3) the public interest was served by relief that protected against consumer confusion.

The case is No. 1:15-cv-01656-GEB-EPG.

Attorneys: John J. Dabney, PHV (McDermott Will & Emery LLP) for Brooklyn Brewery Corp. A New York Corp. Justin Thomas Campagne (Campagne & Campagne, P.C.) for Black Ops Brewing, Inc.

Companies: Brooklyn Brewery Corp.; Black Ops Brewing, Inc.

MainStory: TopStory Trademark CaliforniaNews

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