A federal judge last week refused to dismiss a trademark-violation lawsuit against Route 66 Junkyard Brewery in Grants, New Mexico.
Judge Judith C. Herrera said factual issues remain over whether Henry Lackey’s Route 66 shield-inspired logo for his microbrewery and restaurant infringes on Cypress-based Lodestar Anstalt and its Route 66 Beer, which also uses a Route 66 shield logo.
According to Bloomberg Law:
The mark and logo look similar because they share the phrase Route 66 set in a highway shield sign. Lodestar’s beer is Route 66; the defendant’s full name is Route 66 Junkyard Brewery, the court said.
Both parties presented evidence concerning whether the defendant intended to pass off its product off as the plaintiff’s beer, but neither presented evidence of actual confusion, the court said. And though their marketing strategies are similar, the beers aren’t sold in the same channels, the court said.
The defendant’s beer is only sold in its brewery. Lodestar sells its beer through retail outlets and bars, it said.
Applying the remaining factors to determine infringement, the court said Lodestar didn’t establish the strength of its mark. Only the factor that weighs the degree of care consumers are likely to exercise when purchasing craft beer weighed in favor of the defendant, it said.
Route 66 Beer claims to be distributed in New Mexico. However, as a New Mexico resident, I’ve never seen it. If it is being distributed in the Land of Enchantment, it’s only nominally.
Lackey defends his brewery’s name in part because it’s on 1634 E. Highway 66 in Grants, which is old Route 66 in town.
One possible secondary defense is “Route 66” and the Route 66 shield are in the public domain in the United States and are not subject to copyright or trademark. Other lawsuits in the U.S. failed for that reason. “Route 66” and the shield are trademarked in Europe, but since Route 66 Junkyard Brewery isn’t shipping beer there, that isn’t a problem for it.
Perhaps Lodestar altered its logo just enough to get it trademarked in the U.S., or perhaps the U.S. trademark office approved it in error.
(Image of Route 66 Junkyard Brewery via Facebook)
I hope the court would ask Lodestar Anstalt what retail outlets and bars in the U.S., and specifically where in New Mexico, their beer is sold.
Question: if there had not been a Route 66, would any seller of any product totally unrelated to highways, roads, freeways, motorways, have given it the name of a highway anywhere in the world just as a tag to sell more of it?
Where does Lodestar Anstalt have its registered office? Where does it publish its annual accounts, showing sales, taxes paid, etc? Are they not in the public domain?
Can only one beer maker in the whole world lay claim to the Route 66 name?
According to the website http://www.americancraftbeer.com Lodestar’s Route 66 beer is brewed in Wisconsin (I believe by Rhinelander Brewing Company). Lackey stated that although Lodestar’s beer was briefly sold in New Mexico, at the time the lawsuit was filed the beer was not available anywhere in the United States. The article is available at https://www.americancraftbeer.com/international-route-66-beer-name-conflict-brews/
Lodestar Anstalt is marketing their Route 66 beer through http://www.route66beer.com but it is only available in Spain, Slovenia, U.K., France, Switzerland and Croatia.
According to the website https://trademarks.justia.com/owners/lodestar-anstalt-2061925 Lodestar currently owns 3 different Route 66 trademarks.
Lodestar uses a variation of the Route 66 Emblem, but Junkyard’s logo is closer to the actual shield design. Route 66 Root Beer uses a similar design, as well. Will Lodestar sue them, as well?
Public domain is public domain, so how can anyone trade mark Route 66 – or Route 56 or Route 76?
Does Route 66 Root Beer have a bigger market than Junkyard? And thus more powerful lawyers?