December 27, 2012
In a thrilling and wondrous feat, I will resolve this question with three simple statements:
- Generally, a generic term cannot receive trademark protection;
- A term is generic when it is common or descriptive, and lacking distinctiveness; and
- An “alehouse” is a Middle English word used to describe a place where people go to drink beer.
Thus, “ale house” is generic to describe a place to buy and drink beer and cannot receive trademark protection.
Bedazzling, wasn’t it?
Unfortunately, most courts don’t have the same penchant for showmanship as I, and the one tackling this particular question ruined the trick by writing a rather lengthy opinion about it. In fairness to the court, however, they had to address issues of trade dress and issue preclusion, too.
The case is Miller’s Ale House v. Boynton Carolina Ale House, decided by the Eleventh Circuit Court of Appeals last week.
Miller’s Ale House is a restaurant chain with about 50 locations, most of which are located in Florida.
Boynton Carolina Ale House is a licensee of a restaurant management company based out of Raleigh, North Carolina.
The dispute between the two establishments actually began back in 2008, when Boynton Carolina opened a restaurant less than a mile from an already established Miller’s Ale House location.
Miller’s sued for trademark and trade dress infringement, claiming not only that it was entitled to trademark protection for “Ale House,” but that several of the Boynton Carolina restaurant’s design elements infringed on Miller’s own (“trade dress” refers to how a particular product is packaged; the more distinctive the dress, the more protection it receives).
These design elements, specifically, were “red letters on the outside of its building,…dressing its staff in khakis and a polo shirt, featuring a center bar with a soffit, offering seating at ‘high-top’ tables, and paneling its walls with wood.”
Sounds like a description of your standard sports bar or brew pub, right? The Eleventh Circuit decided the same thing.
Miller’s also claimed that Boynton Carolina copied its restaurant’s floor plans: “a rectangular bar at the center of the restaurant, booth seating to the left of the bar, high-top tables to the right of the bar, a kitchen and freezer area in back-right, and restrooms in the back-left.”
Again, though, the Eleventh Circuit disagreed, finding that “there are only a limited number of ways to turn a rectangular building into a sports bar and restaurant” and that “the similarities between [the two] exist only at the broad conceptual level.”
Finally, the appeals court ruled that Miller’s trademark infringement claim against Boynton Carolina over its use of “ale house” was barred by issue preclusion.
To dust off the civil procedure book, “issue preclusion” bars “successive litigation of an issue of fact or law actually litigated and resolved in a valid court determination essential to the prior judgment, even if the issue recurs in the context of a different claim.”
Applied here, if another court already resolved essentially the same legal dispute between the same two parties, it can’t be brought up again later, even if the factual circumstances are different.
If you can believe it, Miller’s actually sued Boynton Carolina’s licensor company back in the late 1990s, but in North Carolina.
Miller’s tried to argue, then and now, that because its establishments served food, that its use of “ale house” made it distinct enough to entitle it to trademark protection of the term.
The Fourth Circuit resolved the question in the exact same manner as the Eleventh Circuit: “ale house” is generic (and beyond the reach of trademark protection), regardless of whether the establishment serves food in addition to drinks.
Although one must question the wisdom of filing lawsuits with such an astounding lack of legal support, they at least serve to set up jokes quite nicely.