Stone Brewing Co. is a San Diego brewer that has sold its beers for over two decades. Stone has maintained its trademark and brand from the beginning, registering the STONE mark in 1998. Stone has used the STONE mark consistently on its products since its inception. MillerCoors is a multinational beer conglomerate. Since 1989, Miller has sold the Keystone brand of beers. In 2017, Miller undertook efforts to “refresh” its Keystone image by updating the can and package design. The new can design took “KEYSTONE” and separated “KEY” and “STONE” onto separate lines. The packaging emphasized “STONE”
rather than “KEYSTONE.” Alongside the redesign, Miller introduced a new ad campaign with the slogan “Hunt the STONE.”
Since introducing the new designs and ad campaign, Keystone Light has gone from Miller’s worst, to its best-selling beer of the Keystone Line. At the same time, Stone noticed a discernable drop in its sales as current and potential purchasers were allegedly confused by Keystone’s new can and packaging. For example, in December 2017, a consumer reached out to Stone to inquire about the new “STONE LITE” product—a product sold by Miller, not Stone.
Stone filed a motion for a preliminary injunction enjoining Miller from using the STONE mark.
JUDGE BENITEZ First, the Court will weigh each of the Winter factors to decide whether a preliminary injunction should be granted …
i. Strength of Mark … The Court finds Stone’s mark to be commercially strong and recognizable. Moreover, while it is both nationally and internationally known, it need not reach the level of worldwide profitability and recognition of other market icons like Apple or Starbucks in order to be considered a “strong” mark. (Doc. No. 30-1 at 18.) Next, the Court considers what level of protection the STONE® is entitled to based on its conceptual strength …
STONE® may be considered a suggestive or possibly arbitrary mark. However, currently, the Court is unconvinced that STONE® is an arbitrary mark because the can and packaging incorporate more than just the letters STONE. For example, even a glancing look at the “Selection of Stone’s Iconic Brews” in the Complaint show a large gargoyle perched ominously over the STONE® mark, aptly described as Stone’s mascot. (See Doc. No. 1 at 7.) Stone’s packaging appears to reflect the same. Taken together, strengthens the Court’s finding that its mark is suggestive, not arbitrary. However, the Court agrees, especially considering the marks incontestability, STONE® is entitled to the strong protection afforded to suggestive marks.
Thus, this factor weighs in favor of Stone.
ii. Proximity of Goods Second, the Court considers the proximity of the goods …
Stone and Miller are both nationally known beer producers … Since Stone and Miller both produce a beer which is distributed nationally, a consumer is likely to encounter both within close proximity of the other, making it is reasonable to consider Miller a direct competitor of Stone.
Thus, this factor weighs in favor of Stone.
iii. Similarity of the Marks Third, the Court considers the similarity of the marks. The marks at issue, in this case, are a matter of perspective and weigh heavily on the products staging and the angle of the viewer.
Stone contends that Miller has rebranded “Keystone” beer so that its primary source identifier is “STONE.” (Doc. No. 30-1.) It has instructed retailers to display the cans so that “KEY” is obscured. Id. Moreover, it has produced in-store displays on which only “STONE” is visible. Id. In doing so, Miller has adopted Stone’s STONE® mark to market its identical product-beer which leads to consumer confusion. Id.
Miller does not contest Keystone Light cans have “STONE” prominently printed along the side in a large font. (Doc. No. 44 at 20.) However, what Stone conveniently fails to mention is that a consumer picking up, or even just looking at a Keystone can see the full name KEYSTONE Light (twice), as well as the bright-yellow house mark of Coors, printed on the can as well. Id. Moreover, as reflected by the Stone tweet that Miller cites in its Response, Stone was well aware of this fact. Id.
After reviewing the parties’ arguments and the products themselves, the Court finds there are more differences in the marks than similarities when considered in their entirety and as they appear in the marketplace.
Thus, this factor weighs in favor of Miller.
iv. Evidence of Actual Confusion Fourth, “a court conducting a trademark analysis should focus its attention on the relevant consuming public.” …
… Stone also offered what it called “actual consumer statements of confusion.” (Doc. No. 33-1 at 23.) The proffered consumer statements offered little more than conjecture and no support to Stone’s claims of consumer confusion. Even assuming the statements were valid, a tweet showing a picture of a beer truck trailer with one of the doors rolled up (likely due to the driver making a delivery) so that the Miller product displayed on the side reflects “Stone” instead of “Keystone” is irrelevant and offers no support to a determination of consumer confusion. (See Doc. No. 44 at 24.)
Thus, both factors considered weigh even, if not slightly for Miller.
v. Marketing Channels Used Fifth, the Court considers the marketing channels used. “Convergent marketing channels increase the likelihood of confusion.” Sleekcraft, 599 F.2d at 353. Both Stone and Miller sell through thousands of the same stores, restaurants, pubs, and liquor stores. (Doc. No. 30-1 at 22.) The products literally are seen on the same aisle. Id. Moreover, both Stone and Miller also advertise and sell merchandise through their corresponding websites, market via the same social media channels (including Facebook, Twitter, and Instagram), and use similar in-store displays and brand packaging. Id. However, “where both parties utilize the Internet,” or some other “less obscure” channel to market the products at issue, “the Ninth Circuit has found this factor carries little weight in the likelihood of confusion calculation.” …
Thus, considering the aforementioned, this factor weighs even.
vi. Type of Goods and Degree of Care Likely to Be Exercised by the Purchaser Sixth, the Court considers the type of good and degree of care likely to be exercised by purchasers. The lower the customer care the greater the likelihood of confusion …
In response to this factor, Miller notes that Stone pointedly danced around this issue and did not answer how much care consumers would exercise when looking to make a purchase of its products. However, even if it had, Miller argues there are sufficient differences in the cans, packaging, and price between Stone and Keystone that consumers would likely know the difference. The Court agrees.
Thus, this factor weighs in Miller’s favor.
vii. Defendant’s Intent in Selecting the Marks Seventh, the Court considers Stone’s intent in selecting its mark …
Stone argues that it is undisputed that Miller was aware of its trademark when it began selling its refreshed Keystone Light products. (Doc. No. 30-1 at 26) …
Miller argues that it has demonstrated prior, continuous use of STONE and STONES in connection with Keystone beer dating back to at least 1995. (Doc. No.
44 at 27) …
Neither side has produced enough evidence of Miller’s intent in selecting to use what it refers to as its common law mark for more than a decade.
Thus, the Court cannot make a determination as to Miller’s intent at this time. This factor is therefore neutral.
viii. Likelihood of Expansion of the Product Lines Eighth, the Court considers the likelihood of expansion of the plaintiff’s product lines … Because the Court has found that Stone and Miller are direct competitors, see Part III.A.1.ii, “this factor is unimportant.” Network Automation, 638 F.3d at 1153.
Thus, this factor weighs neutral.
…Taking all the factors into account, the Court finds that Stone’s trademark infringement claim against Miller is moderately strong.
… A plaintiff must “demonstrate a likelihood of irreparable injury—not just a possibility—in order to obtain preliminary relief.” Winter, 555 U.S. at 21, 129 S. Ct. 365. Stone falls short of establishing that absent a preliminary injunction, it would suffer irreparable harm.
Motion for Preliminary Injunction denied, in favor of Defendant.
CRITICAL THINKING:
How does this depend to a large extent on the definitions of a few particular terms? How good are the definitions used? What standard are you using in determining whether the definitions are good?
ETHICAL DECISION MAKING:
If you were the person who had revised the image and advertising campaign, would you have acted that way had you acted in accordance with the Goldern Rule?