Dingbats Aren’t Just Bud Light Drinkers

Yet another post that has nothing to do with BBQ and is only tangentially related to the substance of beer, though two breweries are involved. Keep scrolling, Mr. Chug-A-Lug or Ms. Brisket Lover. This isn’t the blog entry for you.

When I’m not loading my body with the poisons of alcohol and cholesterol, I pay bills as an Intellectual Property attorney. That means that before continuing, it’s time for the Disclaimer: In case you didn’t already know, nothing here is legal advice. Don’t rely on anything here as legal advice. Remember that seeking legal advice from a BBQ & beer blog = You fail at life.

A friend shared an article on Facebook about a lawsuit filed by fairly well known brewer Magic Hat against relative newcomer West Sixth Brewing Co., out of Lexington, KY. Intrigued by craft breweries in litigation, I clicked. Turns out Magic Hat, owner of the #9 trademark and current applicant for the #9 design registration for their #9 beer, took exception to the West Sixth logo.

Look for yourself.

This is the federal mark that Magic Hat filed with the US Patent & Trademark Office (image from the USPTO TESS database):

#9 is divine

#9 is divine

It doesn’t come in black & white on the shelf. Here is a pic from an early Drink This Beer from this very blog:

Drink this beer

Drink this beer

And, here is the West Sixth logo that caused all the hubbub (image from the currently-overwhelmed by traffic westsixth.com, via Google images):

It's a 6, you dingbat!

It’s a 6, you dingbat!

Factoid of the day: That little eight pointed star is called a dingbat. Frankly, I think it’s an important part of this case for reasons I’ll explain.

Taking the very, very 10,000 foot view on this issue, the case comes down to customer confusion between these two marks. There’s a series of factors involved, but that’s it. Are you confused? Would you ever buy West Sixth thinking you were buying Magic Hat #9?

As for me, the answer is no. Every case is subjective, but I (1) read labels, and (2) like to think that I know at least a little more than the average beer drinker.

More specifically, there are well-known factors that courts use to determine when a trademark is infringed. For guidance, let’s look to Harvard Law, who wouldn’t touch my undergraduate transcript with a ten foot cattle prod:

“The standard is “likelihood of confusion.” To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).”

In plain English, the Court will evaluate these and other factors to determine if West Sixth is on the hook for infringement liability. Here’s my take on each:

Strength of the Mark – Magic Hat has two trademarks here. The first is the #9, which has been around so long that it’s literally considered incontestable, and for which Magic Hat has a federal registration. The second is the #9 design shown above, minus the color scheme (which is part of the trade dress, not necessarily the trademark… just stick with me here). The second one is merely a registration but has been on file for a few years and I consider it to be a logo that I know on sight. I’d award this point to Magic Hat. It’s not the Budweiser or High Life logo, but it’s a fairly well known mark in its own right.

Proximity of the Goods – Both are beers, both available in Kentucky (the locale of the Federal District Court where this case was filed). Easily a point for Magic Hat.

Similarity of the Marks – A 6 is not necessarily a 9; My kindergarten-aged daughter can tell you that. But, 180 degrees is all that separates the two, and they appear to be in similar if not the same font. The Magic Hat mark has much more in the way of design elements, and the sizing / location of the numbers with respect to the overall logo isn’t the same. There’s also no # in the West Sixth mark. With only these facts I’d be inclined to lean towards West Sixth.

Here is my hangup: The Dingbat. I can’t imagine that many beers have this unique eight point star shape on their beer label. Indeed, none come to mind. It’s right there in the loop of the 9 and next to the upper half of the 6. Yes, the eight points on #9 seem similar, as opposed to the elongated N, S, E & W points on the 6, but it seems like a pretty wild coincidence that you’d have this shape in both labels. I think there’s a chance that a reasonable judge or perhaps jury might award this point to Magic Hat as well. This is very hard to predict.

Evidence of Actual Confusion – I can’t imagine there’s any. West Sixth is a purely local beer, and any Kentucky buyer isn’t going to pick up West Sixth on accident while looking for Magic Hat. We might have a case of reverse confusion, however, where a KY buyer purchases #9 on accident. This one is probably awarded to West Sixth, and is a draw at worst for them.

Similarity of Marketing Channels Used – I can’t comment on this except that the lawsuit alleges that the same distributors may be shuffling this beer around stores. That means they could be on the same shelves in the same parts of the beer aisles at the local grocer. Point to Magic Hat.

Degree of Caution Exercised by Typical Purchaser – This could turn into a powerful point for West Sixth. What is a typical purchaser? If you believe that the typical beer buyer is a moron, you’d be right. Bud Light and other mass-produced scuzbrew dominates both the bestselling beer list as well as the worst beers in the world list. The degree of caution is limited by (1) what’s on sale, (2) what’s on the aisle end cap and saves me some extra walkin’, and (3) what gets me good n’ drunk?

But what about the typical craft beer buyer? That guy who is in the minority of beer buyers who is looking specifically for hand-crafted beer, someone who eschews the watery dreck of Super Bowl ads… what is his level of caution? I’d say it’s pretty high. That guy, the guy in Kentucky who is looking for local craft beer will not pick up Magic Hat #9 on accident. He or she knows brands, knows beer styles, understands hops, can tell you what IPA stands for. That customer is not going to be confused, and that’s ultimately what would I emphasize if I were West Sixth’s counsel in this case. The degree of caution for a typical craft beer purchaser is very high. Point to West Sixth because I’m proud of that distinction.

Defendant’s Intent – I am inclined to believe that West Sixth, a local brewer in Kentucky wasn’t looking to trade off the goodwill of a far more established New England brewer. Did the graphic design guy who did their logo draw inspiration from #9? Maybe, but who can say. I give this one to West Sixth.

CONCLUSION – I’m not a judge and I’ve never been on a TM jury. That Polaroid case may not even be good law anymore. Hell, I’m drinking beer right now (FYI, O’Fallon Kite Tail)! I can tell you this case passes the smile test and Magic Hat may have tried to resolve this without litigation. To file this case, they had to come down to Kentucky. They are going to get some bad press from craft beer lovers, as well as people who look at the logos and think they look nothing alike. This isn’t quite at the scale of Budějovický Budvar vs. Anheuser-Busch (now AB/InBev), but it’s still a relevant dispute in my areas of expertise (IP & Beer).

I’m going to barely side with West Sixth because I don’t see (and can’t imagine) any actual confusion has taken place. I also believe that the craft beer drinker is a man or woman of discriminating tastes who knows what he or she is buying. Litigation is a total crapshoot, so this could turn out totally differently.

(Note to nitpicking lawyers reading this: Yes, I know there is a trade dress claim, state claims, etc. My readership is barely literate and probably came here trying to learn about 55 gallon drum smokers, parboiling ribs, or some other nonsense. This is over-simple, and probably not 100% accurate. Thanks in advance for being kind if you choose to comment.)

My final thought on this is that, even though being sued sucks and is expensive, I have a feeling that this is going to be one of the best things to ever happen to West Sixth. I had never heard of them until today, and I imagine the same can be said for thousands of others who read this or a similar article. This isn’t bad press, it’s a mountain of sympathy press that can be spun as the big out of town brewery coming into Kentucky to push around a little guy… a little guy who sells beer you may want to try.

Updated May 22, 2013: Although I had seen the social media campaign yesterday from West Sixth, only today I came across Magic Hat’s response (other than the lawsuit, which is a pretty powerful response in and of itself), via Magic Hat’s Twitter account. I’m posting both in the interest of fairness. I’ll even link to the Reddit thread.

Updated (Again!) May 22, 2013: The plot thickens! West Sixth isn’t backing down and fired back at Magic Hat. This has gone from interesting to compelling. I’m curious what’s next.

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