Stones have been thrown … and beer cans?
On February 12, 2018, Stone Brewing Co., LLC (“Stone”) filed suit against Molson Coors Brewing Company and MillerCoors LLC (combined “MillerCoors”) alleging trademark infringement, false designation of origin, trademark dilution, unfair competition, unfair competition, and declaratory relief.1
Craft breweries have existed since the late 1970’s, but the industry did not see a big boom in its market until the mid 2000’s.2 While hundreds of craft breweries have come in and out of existence one that survived and thrived throughout the years is Stone Brewery. Over the last couple decades, Stone has established itself in the beer industry as a tycoon among craft breweries as a result of its bold, flavorful, beers. Part of Stone’s success is attributable to the marketing of its, now famous, name STONE, which is a registered incontestable mark (U.S. Registration No. 2168093). This mark was filed in 1996 and gained registration in 1998. Over the years, Stone, has zealously protected its mark, such that whenever the name Stone is mentioned regarding beer the image of Stone’s Gargoyle with the word “Stone” underneath automatically come to mind.
However, another beer company is now trying to benefit off of the goodwill of the precious Stone mark. In mid 2017, MillerCoors announced that it was renaming its signature beer “Keystone” to “STONE” and no surprise to anyone, Stone was not pleased. MillerCoors action led to actual confusion in the marketplace such as vendors calling Stone and asking them about the new line of beer they were releasing, when in fact Stone was not the one releasing a new line.3
MillerCoors recent attempts to benefit from Stone’s success are not just a one-time assault against the “STONE” name, back in 2007 MillerCoors filed an application with the Trademark Office attempting to register the mark “STONES” in relation to beer but were refused due to the of likelihood of confusion with the already registered “STONE” mark (U.S. Serial No. 77/284,994). The Trademark Office’s denial of the mark, nevertheless, was not enough to dissuade MillerCoors from continuing to assail the “STONE” mark, which led to Stone filing its complaint this month.
Stone’s complaint is filled with images clearly showing MillerCoors exaggerating the STONE portion of its KEYSTONE name on both its beer cans and boxes in blatant disrespect to Stone’s registered mark. Placing the two breweries’ cans next to each other it is clear to see that the potential for confusion between the two is imminent.
Besides rebranding its cans, MillerCoors is emphasizing just the word “STONE” in its new marketing. Below are is an image from MillerCoors’ “Stone Hunt Sweepstakes.”
In addition, MillerCoors’ Facebook page for “Keystone Light” is riddled with phrases only using STONE rather than KEYSTONE such as “The sky’s blue and the ‘Stones are shining,” “What’s better than 12 ‘Stones? 15 ‘Stones,” “New look. Same ‘Stone,” “Fit for a ‘Stone,” and “What happens under the mistle’Stone stays under the mistle’Stone.”
At first glance, it seems obvious that MillerCoors is blatantly infringing Stone’s mark, but is there something below the surface that has yet to come to light? Does MillerCoors have an Ace up its sleeve it hasn’t revealed yet?
MillerCoors’ Keystone beer has been brewed under the KEYSTONE name since 1989, which is 7 years prior to Stone filing for its “STONE” mark. So, is MillerCoors relying on a creative first-use in commerce argument to support its right to use “STONE”? Or is this just a marketing strategy of MillerCoors in a desperate attempt to stop Keystone Light’s drastically declining sales?4 As this case progresses many a stone will be thrown , but whose stone will do the most damage and come out on top will be exciting to find out.
ARC IP Law, PC is well versed in all areas of Trademark Law including trademark prosecution and trademark infringement and can help clients protect their company’s image by filing trademarks to enforcing trademark rights.
Danna Cotman, is the founder of ARC IP Law and the Vice Chair of Lawyers Club of San Diego. She has a Master’s in Business Administration, and has years of experience registering, enforcing, and protecting trademarks.