A federal judge on Wednesday granted a nationwide injunction to Charlotte’s Sycamore Brewing Company in its trademark infringement case against Stone Brewing Company. The preliminary injunction will go into effect upon Sycamore posting a $50,000 cash bond. UPDATE (4:11 p.m. ET April 21): Sycamore posted the bond Thursday afternoon.
Sycamore Brewing filed a federal trademark infringement lawsuit against Stone on April 6 in the U.S. District Court for the Western District of North Carolina. In the suit, Sycamore contended that Stone infringed upon its tagline trademark “Keep It Juicy” — which Sycamore registered with the U.S. Patent and Trademark Office (USPTO) in August 2021 and uses on packages of Juiciness IPA — on packages of the California craft brewery’s Hazy IPA.
During Wednesday’s hearing, U.S. District Court Judge Frank Whitney ruled in Sycamore’s favor and rejected Stone’s argument that the description “juicy” and the phrase “keep it juicy” are interchangeable terms, according to Charlotte NBC station WCNC.
In his order, Whitney wrote that Stone and its affiliated parties are “immediately enjoined nationwide from using the Keep It Juicy name and mark, or confusingly similar variations thereof.” Whitney added that Stone can sell through its existing supply of Hazy IPA “packaged in the infringing box” so long as the brewery covers the infringing language with an opaque label or “a new, non-infringing phrase or slogan.”
The injunction will go into effect once Sycamore posts the $50,000 cash bond.
According to Whitney’s ruling, Sycamore “has shown a likelihood of success on the merits of its claims for (1) Trademark Infringement … (2) Unfair Competition … and (3) Deceptive Trade practices …” and Stone’s attorney’s failed to “rebut the presumption of the validity and ownership” of “Keep It Juicy” by Sycamore.
Whitney wrote that Sycamore’s attorneys showed:
- A likelihood of consumer confusion;
- A likelihood of success on unfair competition claims under the Lanham Act;
- Met the burden of establishing likelihood of success on the merits of its unfair competition claim;
- Showed that Sycamore is likely to “suffer irreparable harm absent” an injunction;
- And found that the balance of harm to Sycamore “outweighs the potential harm to” Stone and is in the public interest.
“The mark is distinctive in the craft beer context,” Whitney wrote. “The similarity of the marks is astounding, and the goods are not just similar, they are the same — a craft India Pale Ale.
“In some retail locations, the two products are placed beside or above/below one another,” he continued. “Accordingly, the proximity of products as sold is again staggering. Moreover, the mark has been placed, as a prominent part of the packaging, on both Juiciness IPA and Hazy IPA’s retail boxes.”
A trial in the case is expected later this year.
Earlier this week, Sycamore owner and co-founder Justin Brigham told Brewbound that Stone CEO Maria Stipp told him in a phone conversation that Stone had removed the “Keep it Juicy” slogan off its website and social media, but that company intended “to continue to sell their product until they’re out of it.”
“Basically, it was ‘we’ll stop infringing when we stop infringing,’ is what we were told,” Brigham said. He added that Sycamore was hopeful of reaching a temporary licensing agreement with Stipp to allow Stone to sell through its remaining product and cover the damages the Charlotte brewery believes it has sustained from the alleged infringement, but the proposition was denied before monetary terms could be broached.
In a statement to Brewbound, Stipp said Stone first learned of Sycamore’s use of the ‘Keep it Juicy’ tagline “when the brewery sued us last week.”
“The term ‘juicy’ is widely used throughout the industry to describe IPAs, and Stone has likewise used it in connection with its Stone Hazy IPA,” Stipp wrote. “We were surprised by its claim to own that phrase, especially since Sycamore has never even identified its purported mark with a ® or TM symbol on its packaging.”
Stipp added that the company isn’t interested “in unnecessary disputes with other members of the craft beer community, so we’re hopeful we can reach an amicable resolution with Sycamore.”
Notably, Whitney wrote in his ruling that Stone is expected to release new packaging for Hazy IPA by May 5.