Public Domain: I’ll Drink To That in an “Ale House”

On January 10, 2013, in Trademarks, by Brian A. Hall

UnIP (UnIntellectual Property): Trademark for “Ale House”

The Eleventh Circuit Court of Appeals held that plaintiff did not own exclusive rights to the term “Ale House,” and thus found that defendant Boynton Carolina Ale House was not liable for trademark infringement.  Plaintiff and Defendant are sports bar and restaurant chains, both of which use the term “Ale House.”  Plaintiff claimed common law trademark rights to the term, dating back to 1988, for its use at over 50 locations in connection with the geographic prefix.  Pertinent to this matter, Plaintiff had used Boynton Ale House for its bar located in Boynton Beach, Florida.  When Defendant used Boynton Carolina Ale House for its bar, and incorporated allegedly similar trade dress for interior design and copyrights for floor planning, Plaintiff sued.

Affirming the United States District Court for the Southern District of Florida’s grant of summary judgment to Defendant, this Court recognized that Plaintiff had previously failed to establish a protectable trademark for “Ale House.”  In fact, the Fourth Circuit had previously held that “Ale House” were “generic words for a facility that serves beer and ale, with or without food, just as are other similar terms such as ‘bar,’ ‘lounge,’ ‘pub,’ ‘saloon,’ or ‘tavern.'”  As such, issue preclusion applied and Plaintiff’s claim was barred.  The Court refused to adopt Plaintiff’s argument that despite “Ale House” being generic in 1998, it had acquired sufficient secondary meaning by 2009 so as to qualify as a protectable trademark.

Not only did the court determine that “Ale House” was unintellectual property, it also held that Plaintiff could not establish a protectable trade dress for the interior of the bar because both Plaintiff and Defendant alike had made “mere refinements” of common and well-known forms of interior decoration.

Finally, the Court refused to find copyright infringement for the similarity of the floor plans.  Despite Plaintiff having registered and owned copyright registrations for various floor plans, the Court held that the protection for such “architectural works” was thin and was not enough to sustain a finding of substantial similarity.  Thus, the Court found in favor of Defendant on everything.

I can not disagree with this opinion.  Plaintiff may have been in a better position to pursue the lawsuit if it had successfully attempted to register “Ale House” based upon acquired distinctiveness.  While an unsuccessful registration attempt would have essentially confirmed it lacked trademark rights, it could have saved resources that were expended in order to have the Court find what the USPTO may have found.  I do understand, however, that some times clients choose not to pursue trademark registration so they can at least have the argument and leverage that the mark is protectable (without any adverse finding from an examining attorney at the USPTO).  I do question how many more drinks the Plaintiff and Defendant each had as a result of this dispute.  Next time you are drinking at a bar or “Ale House,” look around and remember that intellectual property law is everywhere.

Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC, 2012 U.S. App. LEXIS 26049 (11th Cir. December 20, 2012).


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