Plaintiff: Motorworks Brewing, LLC
Trademark Registrant: Motor City Brewing Works, Inc.
At Issue: MOTOR CITY BREWING WORKS DETROIT and MOTOR CITY BREWING WORKS
Motorworks Brewing has filed a petition to cancel the following design marks owned by Motor City Brewing Works (“Registrant”) as it believes is and will be damaged by their continued use:
Both of those marks are registered in connection with beer and hard cider and have first use in commerce dates of January 31, 1995. They also have filing dates prior to those of the plaintiff.
According to the petition, Motorworks Brewing is a Florida “micro-brewery specializing in brewing and selling select premium private label beers/drafts.” In addition, Motorworks owns the trademarks MOTORWORKS BREWING and MOTORWORKS BREWING MB., which both claim a first use in commerce date of January 22, 2014.
With cancellation proceedings, it is often a senior user of a mark petitioning to cancel a junior user’s mark that made its way through the trademark process. In this case, however, Motorworks is taking a different angle and asserting that the Registrant wasn’t actually using its marks “in commerce” as it certified in its filings.
As evidence, Motorworks submitted an Affidavit signed by its marketing director claiming that the Registrant does not use the marks in interstate commerce because all 4 of its distributors limit the sale and distribution of its beer and hard cider products to within the state boundaries of the State of Michigan. Therefore, this cancellation depends on whether or not the TTAB determines that the Registrant is using the marks “in commerce.”
WHAT DOES “USE IN COMMERCE” MEAN?
According to 15 U.S.C. § 1127, the term “use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark…A mark shall be deemed to be in use in commerce –
- on goods when –
- it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
- the goods are sold or transported in commerce.
The term “commerce” means “all commerce which may lawfully be regulated by Congress.” Services will usually be considered “in commerce” if they are offered to customers who travel across state lines. Restaurants, for example, usually have no problem showing use “in commerce” as out of state customers are likely.
Goods, on the other hand, will meet the “in commerce” requirement if they are shipped over state lines in furtherance of a sale (or potential sale). In other words, the registrant here will need to show this use “in commerce” or risk losing its marks.
An answer to this petition is due on March 8, 2016. Stay tuned for updates.
