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Tuesday, 28 November 2017 16:44

LITIGATION FOR BREAKFAST? Illinois distillery files trademark complaint against Grand Rapids-based Gray Skies Distillery

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Few Spirits, the makers of Breakfast Gin, left, is alleging Gray Skies Distillery of Grand Rapids is infringing on its trademark with Breakfast Rye, right, a new whiskey that will be released Dec. 3. Few Spirits, the makers of Breakfast Gin, left, is alleging Gray Skies Distillery of Grand Rapids is infringing on its trademark with Breakfast Rye, right, a new whiskey that will be released Dec. 3. COURTESY IMAGE

GRAND RAPIDS — A Chicago-area maker of spirits alleges in federal court that a Grand Rapids-based distillery is infringing on its trademark with the planned launch of a new rye whiskey.

In the case, Evanston, Ill.-based Few Spirits LLC accuses Grand Rapids-based Gray Skies Distillery LLC of trademark infringement, unfair competition and violation of Michigan consumer protection laws for its use of the name “Breakfast Rye,” according to documents filed last week in the U.S. District Court for the Western District of Michigan.

Few Spirits alleges the product name infringes on its trademark for “Breakfast Gin,” which has been on the market since 2011. Few Spirits trademarked the name in January 2016.

In the complaint, Few Spirits said its attorneys reached out to Gray Skies in October, but the parties were unable to resolve the matter. Attorneys for Gray Skies sent a letter back at the start of November saying that the company “is in the process of launching distribution” for its Breakfast Rye, adding that Few “should consider the matter closed.”

Few Spirits filed the case on Nov. 21, alleging that use of the name Breakfast Rye would lead consumers to incorrectly assume Gray Skies’ products “are somehow authorized by, sponsored by or affiliated with [Few Spirits] and its well-known Breakfast Gin mark.” The company says Gray Skies “deliberately and willfully used the Breakfast Rye mark to trade upon the widespread goodwill, reputation and selling power established by Few under the Breakfast Gin mark and to pass its distilled spirits off as those of Few,” the company said in court filings.

Few Spirits is asking a federal judge to prevent Gray Skies from selling products labeled with the Breakfast Rye name, recall any products or promotional materials bearing the name, destroy all labels and bottles with the name, and surrender the TTB-approved label. Additionally, Few Spirits asks the court to have Gray Skies reimburse it for damages caused by the infringement and pay its attorney fees and court costs.

For its part, Gray Skies plans to “defend this vigorously,” according to G. Thomas Williams, an attorney at McGarry Bair PC representing the Grand Rapids company in the case.

“The whole concept of trademark law is to protect consumers from confusion so that they don’t buy one product thinking it’s from one source and it’s actually from somewhere else,” Williams told MiBiz. “When we look at this case, we don’t see that there’s a likelihood of confusion. When you look at the bottles, they’re totally different. When you look at the labels, they’re totally different. …

“These are craft liquors. I’m pretty sure the consumers are discriminating and they’re not going to get mixed up if you hand them a glass of gin and they asked for a glass of whiskey.”

Williams said the case hinges on the descriptiveness defense that words describing what a product is — in this case, breakfast, as associated with flavorings or a time of day — have very little trademark protection.

“Breakfast Rye was named after someone remarked ‘it smells like breakfast’ while trying a sample,” Gray Skies co-owner Steve Vander Pol said in the release today announcing the product would begin to be sold on Dec. 3.

For example, several breweries use the word “breakfast” in the name of their beers. That includes at least two products in Michigan: Founders Brewing Co.’s Breakfast Stout and Arbor Brewing Co.’s Espresso Love Breakfast Stout.

As such, Gray Skies contends the word breakfast is descriptive and said that Few Spirits should never have been granted a mark for Breakfast Gin, according to a filing with the U.S. Patent Trade and Trademark Office (USPTO) in October.

“[Y]ou can’t tie up words in a trademark sense that other companies would need to describe their products used in a similar way,” Williams said. “It just happens to be that the trademark office has been inconsistent with the use of breakfast. They’ve rejected some applicants and allowed Few Spirits’ registration (to go) through. We’re going to ask them to revisit that.”

Joseph Infante, the head of the alcoholic beverage regulation team at Miller, Canfield, Paddock and Stone PLC, called the Few Spirits/Gray Skies dispute a “one-issue case” over whether two spirits can use the word breakfast in their names.

Until recently, the USPTO had ruled that all types of alcohol — wine, beer and spirits — were considered related when it came to trademark issues, but that’s started to change, Infante said.

For example, in 2015, the Trademark Trial and Appeal Board (TTAB) allowed Reuben’s Brews to trademark its name, even though a winery had been granted a prior mark for the name Reubens.

“(The TTAB) said they were different and both can exist,” Infante said, noting that Gray Skies Distillery might make the argument that gin and whiskey are not the same.

“(Few Spirits is) going to say they have a right to use ‘breakfast’ with other kinds of spirits. The question is: Are they going to have it outside gin? It boils down to the question of confusion. Are consumers going to be confused they’re the same?”

From Williams’ point of view, the chances of that happening are “absolutely remote.”

The trademark issue could also hinge on whether the two products cover a similar geography, according to Infante. Gray Skies Distillery’s products are sold only within Michigan, while Few Spirits distributes its products to a handful of states, not including Michigan.

Rhoades McKee PC is serving as local counsel for Few Spirits, along with Neal & McDevitt LLC of Northfield, Ill.

A request for comment from an attorney representing Few Spirits locally was not returned before this report was published.

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