We met with Kelly Meyer from New Braunfels Brewing recently at Whichcraft to find out the status of “Dude Help us Fight Goliath”.
He stated that currently they are in negotiations and will update us soon! Hopefully this won’t get dragged into court.
Here is the story:
“The guys over at The Gambrinus Company, the guys that own Spoetzl Brewing and the Shiner beers, had their high-priced IP attorneys send us(New Braunfels Brewing) a cease and desist letter because we make a pretty awesome beer called Wicked Fuel with coffee from Independence Coffee Company in Brenham, TX.
We made a couple of batches for our taproom only back in 2013. Based on its popularity we decided to seek label approval and subsequently received it on December 17, 2013.
Since then we’ve brewed Wicked Fuel a few times and decided to make it our Nov/Dec seasonal, to the applause of our fans.
So this whole time the Gambrinus boys were sitting on a trademark for using the word wicked in anything that has to do with beer, or malt beverage specifically. How? Apparently they picked up the trademark when they bought good old Pete’s Brewing Company, the guys who made Pete’s Wicked Ale. I actually drank the crap out of Pete’s Wicked Ale as a kid so this whole thing is kinda like shaking hands with one of your idols. It’s pretty cool. But I have to admit, it’s also pretty stupid.
Basically, the Gambrinus boys have a trademark for a product that they publicly discontinued in 2011. They would have had to submit live samples to initially get the trademark, which is important. But in August 2015 they transferred ownership of the mark from Pete’s Brewing Company (which no longer existed) to the boys in Shiner so that they could make a beer called Wicked Ram. At that point they realized that they hadn’t been enforcing their trademark (which you have to do) so they started mailing out some letters.
So now they have us, a small brewery in Minnesota owned by some dudes, an even smaller brewery than us here in TX, the funky boys in Ashville, NC, one owned by Pennsylvania Parrotheads in Hanover, PA, a naughty one in Florida and…….wait for it………Miller Brewing Company all using the word Wicked in their products. Basically, they’re screwed. You can’t have a trademark for a product you don’t produce and they sent letters to their distributors in 2011 stating that they were not going to make wicked beer anymore. Aside from that, you have to protest people using your trademark so it stays your property. And as one example, when Wicked Weed Brewing filed a trademark application for their name, Gambrinus protested it like they should. AND THEN WITHDREW THEIR OPPOSITION. So Wicked Weed now has a trademark for that name. Back in August 2015, SAB Miller was granted a trademark after a similar debacle. So now there are too many beer manufacturers using the word and have been for years that Gambrinus has missed their window to successfully protest, and therefore protect, their trademark. And when Gambrinus, or Shiner, lost their opposition to these trademarks, they effectively lost their trademark.
Plus Miller Coors is in the wicked game now. I figure I’ll change our name when they change Redd’s Wicked Apple. This should be fun to watch.
The frustrating part of all the recent trademark disputes between breweries is that it truly is the nature of the beast. Gambrinus paid good money (is there any other kind) to an attorney to protect their brand. That attorney has to spend time, money and brain juice to protect what it took time, money and brain juice to aquire. But is there really any chance in the marketplace that a consumer will mistake my draft-only super dark, rich, cold-brewed coffee dunkelweizen with another hop-forward IPA?
So anyways, here’s my response to their letter to me:
I received your cease and desist letter today in reference to your client’s “ownership” of the word “wicked” as it relates to beer.
Our successful rebuttal is 4-fold:
1. The beer originally produced to warrant the granting of Trademark 3,552,392 is now out of production and has been for the last 4 years, with a public statement to the same.
2. Trademarks 4,795,906 & 4,401,689 both grant other companies to use the word wicked in their malt beverage products.
3. There are now too many products in Class 32 for beer that have been using the word wicked in their name that you have effectively lost the wicked trademark.
4. There is no chance of someone mistaking Wicked Fuel for an out of production beer from the 90’s. If you attempt to make the argument that the trademark now relates to Spoetzl’s Wicked Ram, I would successfully argue that Wicked Fuel was brought to market years before Wicked Ram so we have a Common Law Trademark that not only supersedes Wicked Ram, but provides us a legal right to protest it’s use, which we would choose not to do.
In short, Wicked Fuel is a beer with so much freshly roasted, freshly ground coffee in it that is tastes like happiness feels. And we’ll never let anyone take our happiness away. Plus, it’ll give us the energy to fight for days.
So let’s do this: You guys keep making your Wicked Ram IPA and we’ll lovingly keep making our Wicked Fuel Coffee Dunkelweizen with fresh coffee from Independence Coffee Company. If anyone drinks ours thinking it’s yours, we’ll give them their $5 back and spend a few minutes explaining the difference between coffee and brewer’s hops. If you guys have someone who could do the same on your end, that’d be Wicked Awesome. Maybe it’ll make the world a better place for beer drinkers everywhere. Maybe both of our companies will continue to grow in harmony and no one will ever mistake a black coffee beer for a hoppy pale ale.
Maybe Wicked dreams do come true.
Kelly “KFM” Meyer”
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