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Railtown Brewing sues planned Byron Center brewpub, alleging confusingly similar name COURTESY PHOTO

Railtown Brewing sues planned Byron Center brewpub, alleging confusingly similar name

BY Monday, August 27, 2018 12:28pm

DUTTON — An established Grand Rapids-area craft brewery is suing a nearby Byron Center-based brewpub in planning, alleging that the startup’s name is confusingly similar.

Railtown Brewing Co. alleges in the case that Railbird Taphouse and Brewery’s name has already led to confusion in the marketplace, and “is likely to continue to confuse, mislead and deceive consumers,” according to documents filed today in the U.S. District Court for the Western District of Michigan.

Justin Buiter, co-founder of Railtown Brewing, told MiBiz the federal trademark lawsuit came about after “numerous” instances of consumers confusing the two companies, and after earlier attempts broke down to come to agreement with the company’s owners.

The proposed Railbird Taphouse and Brewery at 2619 84th Street SW is less than 10 miles away from Railtown Brewing, which was established in 2014 and expanded earlier this year to a newly-built brewery and restaurant at 3595 68th Street SE. Railtown registered a trademark for its name in June 2017.

In a response to a cease and desist letter from Railtown, Railbird’s attorney called the claims of trademark infringement “unfounded” and “unsupported,” noting many companies have trademarked the word “rail” in connection with beer. In the response letter, Railbird also noted that its name serves as “an homage to the former hotel that specialized in chicken dinners for decades” at the site of the proposed brewpub.

Principals from the two companies “met up over a few beers” to discuss the naming issue, but “there was a strong resistance to any type of name change” on the part of Railbird’s owners, Buiter said.

“We had hoped to work something out outside of the courtroom,” he said. “We just built a new taproom and we have a lot of exciting stuff going on. This is something we don’t need.”

Messages for Railbird’s attorney were not immediately returned as this report was published.

In the court filings, Railtown alleges that Railbird’s use of a confusingly similar name amounts to trademark infringement and unfair competition.

Railtown requested that the court issue an injunction preventing Railbird from continuing to use the name, remove all mentions of the name from its business, and pay for Railtown’s damages and attorney fees.

Because Railtown is alleging Railbird acted willfully to infringe on its mark, the company also is asking the court to award triple damages in the case, according to the filing.

As the craft brewing industry continues to grow — more than 1,000 new breweries opened from mid-2017 to June 30 of this year, according to the Brewers Association — trademark cases have become more common. In many instances, the small companies operate in different parts of the country and often come to agreements that carve out various geographies where each brewery can use a disputed name.

But the proximity of Railtown and Railbird renders that option moot in this case, said Joe Infante, the head of the alcoholic beverage regulation team at Miller, Canfield, Paddock and Stone PLC who is representing Railtown.

“We can’t come to an agreement where both can use the name in this situation because of the proximity,” Infante said. “Railbird is just 9.8 miles away.”

Buiter said his company offered to help Railbird finance an initiative to rename and rebrand its operations, and to pay for a lawyer to file trademarks for a new name.

Railbird’s owners so far have refused the offer and declined to change the company’s name, leaving Railtown no other option but to file a case to protect its trademark and the work that’s gone into establishing the brand, Buiter said.

“There’s not a lot of middle ground, outside of a name change,” he said. “There’s not a lot we can do, but we’ll do what we can to help.”

Railbird is a DBA of Byron Station LLC, which was founded in June 2016 and lists Mark Sytsma as its registered agent and manager. The company also registered an alias for “Byron Station Brewery and Taphouse,” according to state records.

Filings with the U.S. Patent and Trademark Office in November 2016 show the company applied for a standard character trademark for the “Railbird Taphouse Brewery” name as it relates to beer. However, the company filed to surrender the mark earlier this month “due to an error made while filling,” according to USPTO records.

In the court documents, Railtown alleges that Railbird “misrepresented certain facts” to the USPTO “by representing that it had used the Railbird Taphouse Brewery mark in commerce since at least October of 2017.”

To receive a trademark registration, a company needs to first use the name in commerce, which in this case would mean using the Railbird brand to sell beer. However, the company has not yet received Michigan Liquor Control Commission approval to open, according to state records.

Buiter at Railtown said he hopes to see the case get resolved — whether in court or out of court — before Railbird has a chance to open its doors and create even more confusion. To date, customers have mistakenly thought that the Byron Center brewery would be a second location for Railtown, he said, noting some people also have mistakenly sent employment inquiries to him seeking work at Railbird.

“Our biggest thing is that we just want to see them stop using the name,” Buiter said.

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Editor’s note: This story has been updated with background on the Railbird Taphouse and Brewery name and the company’s initial response to a cease and desist letter from Railtown Brewing. 

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