Fires Out in Bend

Wildfire Brewing told to find new name

Bend, Oregon’s newest brewery is Wildfire Brewing, or at least it was, because Chicago-based restaurant chain Wildfire Steaks, Chops & Seafood recently sent a cease and desist letter to the fledgling brewery giving them six-months to change the name. And while the restaurant chain operates in only Illinois, Minnesota, Virginia and Georgia — and doesn’t brew beer — Wildfire Brewery owner Garret Wales decided it wasn’t worth the fight.

The Oregon brewery simply couldn’t match the cash of the well-established chain for lawyer’s fees. It’s not clear that the restaurant chain would have prevailed. The two operate in separate geographic regions with a wide gap in between the two and only the brewery makes beer, so it’s hard to see where the confusion on the part of customers might be. But the brewery might one day want to serve food, too, and decided to change its name instead.

According to Wales, the challenge now is finding a new name.

“Shoot, we’re going on the Internet and just typing in beer, or going to the thesaurus. Googling Oregon geography and seeing if there’s some landmarks that haven’t already been trademarked. Butte, or mountain – the river’s kinda tied up obviously. Seems like everything locally Deschutes has used already.”

So far, they’ve narrowed it down to five possibilities. But they’re also opening it up to customers, distributing fliers in their market asking the public to suggest a name. If they use on of the names submitted, Wildfire Brewery will give the winning submission a free kegerator

Comments

  1. Laughing Dog says

    I think all brewers should boycott and refuse to sell product ( and yes you can do that even through a distributor) to Chicago-based restaurant chain Wildfire Steaks, Chops & Seafood unless they drop this nonsense, if you look at the precedence being set then all the businesses with the word dog in them can send same letters to each other or heck if you have the word brewing in your breweries name where does it stop ? BTW I Google’d business with wildfire in the name and quickly found 5 that predate the restaurant, so I think Wildfire brewing should contact them to put the heat on the restaurant chain! If they want help I will help will the rest of you?

    Laughing Dog Brewing

  2. beauxman says

    I am going through a similar thing, except with a winery (Ravenswood) regarding trademark oppositon. There is nothing more I can say here that would be fit for public posting…
    -Beaux

  3. BMOOR says

    Laughing Dog wrote: I think all brewers should boycott and refuse to sell product ( and yes you can do that even through a distributor) to Chicago-based restaurant chain Wildfire Steaks, Chops & Seafood unless they drop this nonsense, if you look at the precedence being set then all the businesses with the word dog in them can send same letters to each other or heck if you have the word brewing in your breweries name where does it stop ? BTW I Google’d business with wildfire in the name and quickly found 5 that predate the restaurant, so I think Wildfire brewing should contact them to put the heat on the restaurant chain! If they want help I will help will the rest of you?

    Laughing Dog Brewing

    I agree, it is nonsense-but unfortunately your plan of boycott only (i htink) would involve the big three, probably Sam, Guiness/Bass/Harp and possibly local beer, Goose Island. Sadly, this type of company is not beating down the door for us little guys.
    Beaux, a similar situation happened in Eugene with Willamette, now Oakshire. Get ahold of them if you need any advice.
    Good Luck!:cool:

  4. bevmeister says

    First, I WILL help.!!!

    I agree, you guys at Wildfire Brewing should probably continue the fight. Use the internet to show past precedence, let the restaurant know they do not own that name, and I for one, living in Chicago area, will personally make the effort to reach out to some one of importance at the restaurant and let them know how ridiculous this is, and that I will no longer support that restaurant, and will encourage friends and relatives NOT to support the restaurant either.

    I think Wildfire Brewing has plenty of good arguments in their favor that would allow you to succeed, most importantly the geographic separation and an operating brewery vs none, but I do also understand the potential financial investment that may have to be made, so do you or do you not fight this battle? Ultimately that is your decision.
    When and where will this type of nonsense ever end?
    Good luck, and let’s see more support here from the public for Wildfire Brewery.!!!!!

  5. Gregg says

    beauxman : Sorry to hear about that. We served Ravenswood zinfandel at our wedding a few years ago (before they went “public”); I do not know anything about Constellation, but it is sad to see another example of the headaches that big corporations bring to business.

    And yes, there were one or two beers served too.

    Gregg

  6. brewbong says

    Boy howdy!
    If we could only devote 1/1000th the acreage devoted to raising attorney’s to raising hops we’d be stylin’.

  7. JoeV says

    Although I don’t distribute out that way. I wouldn’t send em any of my beer. It seems to me that they are just flexing their muscles to scare you into changing your name. Remember just because you get a cease and dissist doesn’t mean the sender has any actual legal ground to stand on. Its a tough descision but I think you could probably fight. You should talk to a lawyer, if you have not already. In fact talk to a couple if you can, they often have different opinions, and are willing to give some advice gratis.

  8. beauxman says

    It would be nice if in the future there was a way for the BA to be able to assist in legal matters regarding our trade. Maybe raise the dues a few bucks and start some sort of collective database for us to draw from regarding legal actions and research?

    -Beaux

  9. uptown brothers says

    Dear Ravenswood:

    So every time somebody uses the word “Raven” in a trade name, it violates your copyright?

    Hmmm. How much do you gentlemen reckon YOU owe ME?

    My solicitors will be in touch. Expect a cease-and-desist order in which the word “Nevermore” is fairly prominent, a sort of theme or in the German, leitmotif, actually.

    Toodles,
    E. A. Poe

  10. Archie says

    I am a lawyer and also part owner of a brewery. I do transactional business work and some trademark work. I am only licensed to practice in one jurisdiction and I do not represent any one here so DO NOT take this post as legal advise.

    With both “Wildfire” and “Ravenswood” I would tell those scum sucking attorney’s to pound sand. These claims are totally crap. There are some basics to trademark law that one has to understand. The burden is on the challenger to prove that the alleged infringer’s usage of a name or mark is likely to result in confusion, mistake, or deception by consumers. This legal analysis generally relies on a number of factors set forth by the federal courts. Among the most important of such factors are: (1) the degree of similarity between the marks; (2) the physical proximity of the goods in the market; (3) the strength of the challenger’s mark; (4) degree of care consumers exercise in purchasing the goods; (5) actual confusion of the two goods; (6) evidence of the alleged infringers intent to cause confusion, mistake or deception.

    When a company “trademarks” a name or mark with the U.S. Patent and Trademark Office (USPTO), they must do so under a certain and specific Goods & Services Classification (“G&S Class”), noted by an “IC” code. If registration on the USPTO Principal Register is successful, the owner of the registered mark gains federal protection of their mark for that certain G&S Class, however, the protection is merely that the mark is presumed to be protected and the owner has access to the USPTO for enforcement, as opposed to common law enforcement in state court.

    Beer has its own G&S Class, IC 032. Therefore, to claim federal protection, the word “Wildfire” or “Raven” must be registered under IC 032.

    Regarding “Wildfire”, the only “Wildfire” mark registered with the USPTO having anything to do with food services is:

    http://tess2.uspto.gov/bin/showfield?f=doc&state=ab53i8.3.4

    This is under IC 042 for “restaurant services”. Sorry, this does not include beer.

    Regarding “Ravenswood”, the winery is USPTO registered under IC 033 (“wine”) and IC 025 (“clothing”) and NOT IC 032 (“beer”). Therefore, they have no protection under beer to the term “Raven”. Also, the exact word mark “Ravenswood” is also registered by a company making fine china under IC 021. This registration predates the winery’s filing date of their mark by 20 years. It makes no difference that you can drink wine & beer but you can’t drink china, a different IC code is a different IC code. However, it looks like the problem that “Black Raven” is facing is opposition of the USPTO registration of their mark. It should be a cut and dry case due to the IC code issue, however, this is a classic issue of a big company bogging this down in the USPTO procedure, which is expensive and takes a long time. They already have events in the USPTO administrative courts set through March of 2009 (Isn’t America wonderful?). Beauxman, I am sorry you are going through this.

    This is a more detailed response to a post than I have ever made but jacka$$ lawyers like the ones threatening fellow brewers give my profession a bad name. It infuriates me. Generally, you don’t need a lot of money to respond, do some research on the USPTO website, know your rights and write your own letter telling them to each $hit. If you are unfortunate enough to find yourself in beauxman’s situation, get a good friend that is a lawyer, trade him beer for advice.

    Again, this is NOT legal advice. Please take you own time to look at the trademark issues (Wikipedia is great, even real lawyers use is); or contact your own attorney. If you are educated before you go into his/her office, it will save you time and money.

    Regards,
    Adam

  11. beauxman says

    Thanks Adam, everything you said is right. We have two lawyers, both specialties in this stuff. Bottom line is money, time, energy not whether or not we are right.
    -beaux

  12. GarySped says

    This is just pure bullshi_ and I very seldom swear.

    It is time someone grabbed these idiots by the throat and told them the English language is not for sale. The poor fellow in Texas with Starbock – guess who crushed him? (I don’t remember coffee being a key ingredient of Bock beer do you?) A sad case of a restaurant for years called Zorro’s in Indianapolis that suddenly had to change its name when the Banderas version of the movie with that word in the title came out.

    It is pure crap and someone needs to form a league and crush these slime balls. By the way it is time someone renamed a certain restaurant chain by its true name “Krocdonalds”. Look out for the big K everyone!

  13. billvelek says

    Archie wrote: I am a lawyer and also part owner of a brewery. I do transactional business work and some trademark work.

    Thanks, Adam, for a GREAT post. I’m a lawyer, too, but I am a part-time city court judge and a part time city attorney/prosecutor (two different cities) plus I do some private practice for select clients, but I have never done any trademark practice at all. I do agree with the sentiments expressed in this thread, and I really appreciate the in depth answer that you posted because I need to do a bit of digging around for my son who is investigating opening a brewpub operation. You see, he is in the process of opening a pizza and sandwich shop right across the street from the University of Central Arkansas dormitories and football stadium; their mascot is the “Bears”, and so the name of his restaurant will be “Bears Den Pizza”. I was casually discussing the matter with a circuit judge last week, and he brought to my attention that there is a “Bears Den” service station in the city, too, and he asked me if I thought there will be any trademark issues. I don’t know if they sell pizza, so that’s something that I need to put on our list of priorities — to find out; if they do, we will probably have a problem, but _maybe_ that depends on the “brand” of pizza they sell (many gas stations here sell “Pizza Pro” brand). If they don’t sell pizza, we might still have a problem because they could claim that they intend to expand into that area just as a lot of other gas stations have done. And regardless of what they are now doing or their intentions, we can see from the ‘Wildfire’ case that often people will raise legal claims even when they don’t appear to be well founded. And as a primary example of a situation which just happens to deal with service stations, we have the Kellogg lawsuit against Exxon, claiming that Exxon’s use of a tiger (‘put a TIGER in your tank’) violated Kellogg’s “Tony the Tiger” trademark; of course, what does make that a bit more on point than at first glance is that Exxon was using the tiger in regard to foods that it was selling in its service stations, including Domino’s Pizza (what is it with pizza and gas stations and tigers and “BEARS”?). So we might really have some issues to contend with. Fortunately, I used TESS to run a check on “Bears Den” and the service station has not registered.

    Now, to bring this into the context of beers and breweries, my son’s “Bears Den Pizza” has an alcohol permit, too, so he will be selling beer and liquor across the street from the university; students won’t need to drink and drive. UCA is, I believe, the third largest college in Arkansas, and they have had over 12,600 students register for this year … and we are in a “dry” county, meaning that there are only about a dozen places in the city with alcohol permits, and none of them are very close to UCA, and certainly not within walking distance. Can you hear the cash register? 🙂 Anyway, to compound his potential trademark issue, he also owns a big restaurant and nightclub in Little Rock, and I am currently investigating the possibility of expanding it into a brewpub where he would brew “Bears Den Beer” because he can’t brew it at the pizza shop because of our “dry” county, but he could sell it to his pizza shop in Conway for retail sales. But we have “Diamond BEAR” microbrewery in Little Rock which HAS registered their trademark. So, if just a _single_ common word shared between intended users — like “Wildfire” or “Raven” — is enough to stop others from using it, then we’ll probably have a big problem with including the word “Bear”. But where does this stop? Aren’t we going to run out of common words? I think that it’s getting downright ridiculous, and the only real test should be whether the names are confusing to the public, leading them to think that one product is the product of a different company.

    I wish the owners of ‘Wildfire’ brewing the best of luck in finding a new name … but I really wish they would fight this. But I can see how it might seem simpler, cheaper, less of a headache, and more expedient to just toss in the towel.

    Cheers.

    Bill Velek

  14. South County says

    I feel this topic will become increasingly harder in the future. As the craft industry grows and more breweries come on line names are going to harder and harder to come by. Not to mention distribution is slowly tightening from what I hear. Your best market may be your local market. With that said I know we went through 20 names before we found one that was free and clear. The USPTO website was a great place to start, the TESS search database feature is a good tool. Also just a simple search on google “your name” followed by “beer” also cleared things up. I was told by Randy Mosher that if your name shared one word with any edible related product/company e.g. food, beer, wine etc.. there was legal ground to pursue and that who ever had the deepest pockets would always win. I still think they should fight for it if it feasible. Just think about how many “joes garages” are out there.