Anheuser-Busch v. Caught-on-Bleu

2003 DNH 127
CourtDistrict Court, D. New Hampshire
DecidedJuly 22, 2003
DocketCV-02-196-JD
StatusPublished

This text of 2003 DNH 127 (Anheuser-Busch v. Caught-on-Bleu) is published on Counsel Stack Legal Research, covering District Court, D. New Hampshire primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Anheuser-Busch v. Caught-on-Bleu, 2003 DNH 127 (D.N.H. 2003).

Opinion

Anheuser-Busch v . Caught-on-Bleu CV-02-196-JD 07/22/03 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Anheuser-Busch, Inc.

v. N o . 02-196-JD Opinio n N o . 2003 DNH 127 Caught-on-Bleu, Inc.

O R D E R

The plaintiff, Anheuser-Busch, Inc., brings suit against the

defendant, Caught-on-Bleu, Inc., for trademark infringement,

trademark dilution, and unfair competition under the Trademark

Act of 1946, 15 U.S.C. §§ 1051-1127 (“the Lanham Act”), for

trademark dilution under New Hampshire Revised Statutes Annotated

(“RSA”) § 350-A:12, and for trademark infringement and unfair

competition under the common law. Caught-on-Bleu brings

counterclaims for tortious interference, reverse confusion, and

unfair competition in violation of RSA 358-A. The plaintiff

moves for summary judgment as to the defendant’s counterclaims,

(document n o . 41) to which the defendant objects (document n o .

55). Background1

Anheuser-Busch (“A-B”) and its predecessors have brewed and

1 Only Anheuser-Busch has provided a factual statement as required by Local Rule 7.2(b). Therefore, pursuant to the requirements of rule 7.2(b), all properly supported facts provided by Anheuser-Busch are deemed admitted for purposes of summary judgment. LR 7.2(b)(2). To the extent that Caught-on- Bleu has stated contrary facts in its objection and supported such facts with precise citation to the record, the court will consider such facts to be in dispute. marketed beer in the United States under the trademark “Budweiser” since 1876. Within years of its introduction, the public came to abbreviate the beer with the now familiar moniker, “Bud.” At least as early as the 1930s, A-B began marketing Budweiser using the abbreviation “Bud.” For example, A-B placed the word “Bud” on beer taps distributed to bars. A-B has capitalized on the Bud mark over the years by creating what it calls a “family” of beers including “Bud Light,” “Bud Dry,” and “Bud Ice.” In the United States, Bud Light is the top-selling brand of beer and its predecessor, Budweiser, is the second-best selling brand of beer.

The Budweiser mark has been federally registered since 1878 and is owned by A-B under United States Trademark Registration 922,481 for beer and 952,277 for beer and malt liquor. Some of the many Budweiser-related, federally-registered trademarks owned by A-B include: “Bud,” for beer, registered in 1958 under 666,367; “Bud Man,” for beer, registered in 1974 under 999,817; “Bud Light,” for beer, registered in 1983 under 1,261,873; “Bud Bowl,” for beer, registered in 1989 under 1,567,443; “Bud Dry,” for beer, registered in 1989 under 1,567,446; and “Bud Ice,” for beer, registered in 2001 under 2,501,706. The term “Bud mark” will be used hereinafter to refer to any of A-B’s Budweiser- related trademarks.

A-B has extensively promoted and advertised the Bud mark in connection with beer. Much of the advertising and promotion of

2 the Budweiser family of beers explicitly incorporates the Bud

mark. Such promotion includes the widely-known slogans “This

Bud’s for You” and “Make it a Bud Light.” Prominent advertising

campaigns have been crafted around the Bud mark, including the

“Bud Bowl” in which Budweiser and Bud Light teams comprised of

beer bottles play a football game during commercial breaks in the

National Football League’s Super Bowl. Billy Budd Classic American Ale is the brainchild of

Lisamarie Sapuppo-Bertrand, President of Caught-on-Bleu (“C-0-

B ” ) , and Bernice Keeney, C-O-B’s Vice President. Sapuppo-

Bertrand claims that she decided Billy Budd, the main character

of Herman Melville’s novel Billy Budd, would make an effective

trademark for a product. After considering use of Billy Budd for

several different products, including salad dressing, shampoo,

and cologne, Sapuppo-Bertrand and Keeney decided to use Billy

Budd as the name of a beer because “it suited perhaps a beer more

than any other product.” See Keeney Dep. at 5 2 .

In October of 1997, C-0-B filed intent-to-use application

number 75-381682 to register the mark “Billy Budd” with the

Patent and Trademark Office of the United States (“P.T.O.”) for

“[b]eers, mineral and aerated waters and other non-alcoholic

drinks; fruit drinks and fruit juices.” See Keeney Dep. Ex. 1 1 .

This application was later amended by substituting the word

“Ales” for the list of other possible beverages. See id. C-0-

B’s application for the proposed trademark was published in the

3 August 2 4 , 1999, edition of the Official Gazette of the P.T.O.

pursuant to P.T.O. rules.2

In August of 1999, A-B timely sought and obtained an

extension of time to oppose this application. A-B’s counsel

thereafter contacted C-0-B seeking voluntary abandonment of the

application and an agreement not to use the proposed mark in

connection with beer. In February of 2000, after C-0-B refused

A-B’s entreaties, A-B filed notice of opposition number 119,037

with the P.T.O. After a series of proceedings and a period of

discovery before the P.T.O., A-B filed this action for injunctive

relief.

In October and November of 1999, kegs of the defendant’s

beer were distributed in New Hampshire through a brewing and

distribution agreement between C-O-B and New Hampshire Custom

Brewers (“N.H.C.B.”). The distribution was limited to a Brewfest

at New Hampshire College3 and the bars at four New Hampshire

establishments. With these kegs, C-0-B also provided tap handles

bearing the words “Billy Budd.” C-O-B and others have

2 Publication in the Official Gazette provides parties, who believe that they may be damaged by the proposed mark’s registration, thirty days to file a notice of opposition or a request for an extension of time to do s o . 15 U.S.C. § 1063(a) 3 New Hampshire College has since been renamed Southern New Hampshire University.

4 interchangeably referred to the beer as “Billy Budd” and “Billy

Budd Classic American Ale.” See, e.g., Kenny Dep. at 98-106,

111-12, Ex. 3A.

Standard of Review

Summary judgment is appropriate when “the pleadings,

depositions, answers to interrogatories, and admissions on file,

together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party

is entitled to a judgment as a matter of law.” Fed. R. Civ. P.

56(c). The party seeking summary judgment must first demonstrate

the absence of a genuine issue of material fact in the record.

See Celotex Corp. v . Catrett, 477 U.S. 3 1 7 , 323 (1986). A party

opposing a properly supported motion for summary judgment must

present competent evidence of record that shows a genuine issue

for trial. See Anderson v . Liberty Lobby, Inc., 477 U.S. 2 4 2 ,

256 (1986).

All reasonable inferences and all credibility issues are

resolved in favor of the nonmoving party. See id. at 255. “On

issues where the nonmovant bears the ultimate burden of proof, he

must present definite, competent evidence to rebut the motion.”

Mesnick v . Gen. Elec. Co., 950 F.2d 816, 822 (1st Cir. 1991).

“[A]n absence of evidence on a critical issue weighs against the

5 party . . . who would bear the burden of proof on that issue at

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