Friday, December 21, 2007

Battle of the Beers -- Fitger's vs. Fitger

The Duluth News Tribune reported on the grant of a preliminary injunction in favor of Duluth, Minnesota-based Fitger's On-the-Lake ("Fitger’s") against Connecticut-based The Fitger Company ("Fitger Company") over the latter’s use of a similar looking logo on its beer as that used by Fitger’s (link here).

On November 21, 2007, Fitger’s On-the-Lake, LLC filed a trademark infringement lawsuit in the U.S. District Court for the District of Minnesota against The Fitger Company, LLC; The Fitger Brewing Company LLC; Michaud Distributing, Inc.; United States Fire-Arms Manufacturing; and Douglas Donnelly. See Fitger's On-the-Lake, LLC v. The Fitger Company, LLC, et al, Case No. 0:2007cv04687 (D. Minn.).

The suit alleged that the Fitger Company selling beer using Fitger's name and logo and that such use is likely to cause confusion as to the source and origin of its beer.

The hearing on the temporary injunction was held on Tuesday before U.S. District Judge Michael Davis, who issued the injunction the following day. Davis’ order found that Fitger’s had suffered irreparable injury as a result of defendants’ actions and will continue to suffer irreparable injury if defendants’ trademark infringement was allowed to continue. Davis ordered the defendants to stop using any of Fitger’s trademarks, logos, domain name, Web site or Web page or anything that would cause confusion with Fitger’s goods. Davis further ordered the defendants to immediately recall all of the beer, promotional materials, packages, labels, cartons, art work and any material that would infringe, dilute or cause confusion with Fitger’s marks.

On January 24, 2006, Fitger Company filed two §1(b) intent-to-use trademark application – one for the mark FITGER’S (for beer) and the other for FITGER BREWING COMPANY DULUTH and Design (for beer). The applications were published for opposition on September 19, 2006 and October 10, 2006, with no opposition filed within the statutory time frame in either application. Fitger Company recently filed its statement of use claiming first use in commerce on October 25, 2007 and November 27, 2007.

Even after the lawsuit was filed, Fitger Company filed another trademark application seeking registration of a mark that appears to be associated with Fitger’s. See design application here which seeks to register the below image, which happens to be the same picture used by Fitger’s on its website.

Interesting to note that Fitger’s filed its own §1(b) intent-to-use trademark application on June 30, 2000 for the mark FITGER’S (for beer). The mark was published for opposition on May 1, 2001, with no opposition filed. However, no statement of use was ever filed, and the application went abandoned on January 25, 2002.

Fitger's claims that its name and label have been used exclusively since 1993 when the company was founded and purchased the rights. One wonders why Fitger's never sought registration of the name and/or logo once they started using it in commerce. One also wonders why Fitger's did not file oppositions against Fitger Company’s trademark applications when they were published for opposition.

Nonetheless, the fact that the judge was willing to grant a preliminary injunction does say a lot about the merits of Fitger’s case. It certainly gives Fitger's the upper hand at this stage of the litigation.

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