Black Ops Mission Accomplished by Federal Trademark Registration
A recent district court decision granting a preliminary injunction in The Brooklyn Brewery Corp. v. Black Ops Brewing, Inc. demonstrates the advantage of owning a federal trademark registration when products bearing the registered mark are not sold nationwide. The case, which arose in federal court for the Eastern District of California, involved a claim of trademark infringement asserted by Brooklyn Brewery, owner of an incontestable registration for the mark BROOKLYN BLACK OPS for beer, against the use of the marks BLACK OPS, BLACKS OP BREWING and the domain name blackopsbrewing.com for beer and brewery services. Here is an example of one of the defendant’s marks:
Brooklyn Brewery began selling its BROOKLYN BLACK OPS beer in 2007. At the time the preliminary injunction motion was filed, the product was being marketed in 27 states, but California was not one of the 27. Defendant Black Ops Brewing began selling its beer in 2015, only in Fresno County, California. Critically, however, Brooklyn Brewery presented evidence on the motion that “it is planning a strategic launch of its entire beer portfolio, including its ‘Brooklyn Black Ops’ beer, in California, and is negotiating with distributors and identifying potential retailers.”
If Brooklyn Brewery had not owned a federal trademark registration, it most likely would have lost its motion and the case. Even though its first use date of 2007 preceded that of Black Ops Brewing by 8 years, its rights would have been geographically limited to the 27 states in which its BLACK OPS product was then being sold, which did not include California. And Black Ops Brewing would have been deemed the prior and senior user of the BLACK OPS mark for beer in Fresno County, California.
The federal trademark registration owned by Brooklyn Brewery made all the difference. As the court explained, citing 9th Circuit precedent in Mister Donut of America, Inc. v. Mr. Donut, Inc., 418 F.2d 838 (9th Cir. 1969), “where a federal registrant evinces a ‘present likelihood that the federal registrant will expand [its product’s] use into the area of the intrastate user’ the registrant is ‘entitled under the authority of the Lanham Act to injunctive relief.'” This principle is similar to the one enunciated in the coincidentally-named “Dawn Donut” decision in the Second Circuit, Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959). That case held that a senior federal registrant has national priority, but cannot obtain an injunction based on likelihood of confusion against a junior user until the senior registrant can show a likelihood of entry into the junior user’s area of trade. This national priority based on the registration applies even where the registrant’s plan to expand into the junior user’s territory comes after the junior user’s first use.
In the Black Ops case, Brooklyn Brewery was able to establish commercial plans underway for expanding sales of its BROOKLYN BLACK OPS beer into California, and thus it was able to demonstrate a likelihood of success on the merits of its trademark infringement claims.
Interestingly, in addition to relying on its federal registration rights in the mark BROOKLYN BLACK OPS, Brooklyn Brewery also alleged common law rights in the mark BLACKS OPS (without the word BROOKLYN). This additional allegation was likely an attempt to bolster its arguments of confusing similarity with Black Ops Brewing’s marks. The court correctly noted that such common law rights would only be enforceable within their geographic region of use — in other words, not in Fresno County, California. Luckily for Brooklyn Brewery, however, the court determined that it did not need to reach this issue in light of its finding of likely confusion between the federally-registered BROOKLYN BLACK OPS and the marks of Black Ops Brewing.