Miami-based Biscayne Bay Brewing has filed a lawsuit against La Tropical Holdings B.V. and Cerveceria La Tropical USA LLC, alleging that they and their parent companies, Heineken N.V. and Heineken USA, have no basis for their claims of trademark infringement. Those claims, the company alleged, cost Biscayne Bay a commercial relationship with Major League Soccer franchise, team Inter Miami CF.
The lawsuit was filed in the U.S. District Court for the Southern District of Florida earlier this week. It calls for declaratory judgement on three counts of trademark non-infringement and one count of tortious interference in Biscayne Bay’s sponsorship of Inter Miami.
The dispute between Biscayne Bay Brewing and La Tropical Holdings B.V., which is based in Amsterdam in the Netherlands, and Cerveceria La Tropical USA LLC, “a Florida limited liability company with its principal place of business in Petaluma, California,” began with a disagreement over trademark infringement but escalated.
“This is not a simple trademark dispute anymore,” Biscayne Bay’s attorney Alejandro Miyar told Brewbound. “The potential for Biscayne Bay’s growth through Inter Miami and having a presence with soccer fans was enormous.”
A spokesperson for Heineken wrote via email: “We are confident that Biscayne Bay’s claims are without merit. We do not have any further comments while this case is pending.”
A request for comment from Cerveceria La Tropical was not returned.
At the center of the dispute is Biscayne Bay’s Tropical Bay IPA, which the brewery has produced since 2018 and filed an application with the U.S. Patent and Trademark Office (USPTO) on February 8, 2020.
Five days prior to the filing, Cerveceria La Tropical head brewer and brewery operations manager Matthew Weintraub contacted Biscayne Bay founder Jose Mallea and “vaguely asserted that the Tropical Bay IPA trademark infringed [on] a trademark that Heineken or its subsidiaries owned for all beer that included the word ‘tropical,’” according to the court filings. In late May, La Tropical Holdings’ attorney demanded that Biscayne Bay abandon use of the Tropical Bay IPA trademark.
Biscayne Bay argues there are two reasons why it shouldn’t have to abandon the mark.
“The trademark is objectively weak as a result of widespread third-party use and Defendants’ apparent failure to police such use over an extended period of time,” the lawsuit reads.
Cerveceria La Tropical was a Cuban brewery dating back to the 1880s and brewed La Tropical beer. It ceased production in 2008, according to court documents. In the U.S., La Tropical Holdings registered the trademark in 1993 and refiled with updated logos in 2009 and 2019.
Rights to the brand La Tropical have changed hands several times: from original owner Iberia Beverages Inc. to Iberia Wines Corp. in 1996, to La Tropical Brewing Company LLC in 1998, to Three Palms Holdings LLC in 2001 and to defendant La Tropical Holdings in 2017.
“However, none of these companies have been able to sustain any legally significant sales sufficient to maintain trademark rights,” the lawsuit said.
The beer was brewed in the U.S. as early as 1992, but has been out of production since 2016, when a batch was brewed and sold at Miami-based Concrete Beach Brewing, a subsidiary of Boston Beer that has since closed and been transformed into a Dogfish Head taproom.
“This offering was an attempted public relations stunt featuring little more than token sales, manufactured as a futile attempt to preserve non-existent United States’ trademark rights in the long-forgotten Cuban brand,” the lawsuit said.
According to Cerveceria La Tropical’s Facebook page, the brewery’s taproom in Miami’s Wynwood neighborhood will open later this year.
The USPTO concurred that “there was no likelihood of confusion” between Biscayne Bay’s Tropical Bay IPA and La Tropical. Tropical Bay IPA is a hazy IPA “presented to consumers in a vibrant ‘Miami Vice’ style can highlighted by neon coloring,” according to court filings. Meanwhile, La Tropical’s pilsner offering is “presented in a traditional green bottle with traditional stylized font and ‘old world’ design elements.”
“Any beer drinker, ranging from a common consumer to the most discerning craft beer drinker, would have no trouble distinguishing the parties’ respective brands from one another,” the lawsuit reads.
On July 22, La Tropical Holdings requested and was granted an extension of time, to October 21, to oppose Biscayne Bay’s registration of Tropical Bay IPA by the USPTO’s Trademark Trial and Appeal Board.
Miyar explained that Biscayne Bay, and fellow craft brewers, rely on trademarks to compete in the marketplace.
“Trademarks, in this case Tropical Bay IPA, are the identity of genuine small craft brewers and their connections to their birthplaces and home markets,” he said. “It’s only through availing ourselves of the important protections under federal trademark and general intellectual property rights that we can stand a chance to exist while big beer continues to seek to big foot small independent brewers like my client.”
Inter Miami Sponsorship
In February, Biscayne Bay became the official craft beer of Inter Miami, the city’s new MLS team. To promote its partnership with the team and celebrate its inaugural season, Biscayne Bay brewed Inter Miami Pilsner.
As the trademark infringement dispute went on, Biscayne Bay alleges that Heineken “repeatedly pressured Inter Miami and MLS to not perform their obligations to Biscayne Bay,” as Heineken has been the league’s official beer since 2014.
Animosity between the beer brands escalated last month, when Inter Miami demanded that Biscayne Bay sign a termination and release agreement of its two-year sponsorship as the team’s official craft beer, according to court filings.
“Biscayne Bay genuinely believed that an independent craft brewer and Heineken could co-exist for mutual benefit at Inter Miami and MLS events, as Biscayne Bay has successfully accomplished with other professional sports teams in South Florida,” the lawsuit said.
Biscayne Bay is going to “work to assess the significant monetary damages that have resulted from Heineken’s interference with our sponsorship with Inter Miami,” Miyar added.
Biscayne Bay is seeking orders declaring that it has not infringed on the La Tropical mark due to no likelihood of confusion, and that La Tropical’s registrations are invalid due to abandonment. The craft brewery is also seeking payment for all damages sustained by the defendants’ “wrongful acts and tortious interference” in its relationship with Inter Miami.