Boston Beer Co. Ltd. Partnership v. Slesar Bros. Brewing Co., Inc.

• Decision Date: 05 October 1993
• Docket Number: Nos. 93-1290,93-1520,s. 93-1290
• Citation: 9 F.3d 175
• Parties: BOSTON BEER COMPANY LIMITED PARTNERSHIP, d/b/a The Boston Beer Company, Plaintiff, Appellant, v. SLESAR BROS. BREWING COMPANY, INC., d/b/a Boston Beer Works, Defendant, Appellee. . Heard
• Court: U.S. Court of Appeals — First Circuit

Page 175

9 F.3d 175

28 U.S.P.Q.2d 1778

BOSTON BEER COMPANY LIMITED PARTNERSHIP, d/b/a The Boston Beer Company, Plaintiff, Appellant, v. SLESAR BROS. BREWING COMPANY, INC., d/b/a Boston Beer Works Defendant, Appellee.

Nos. 93-1290, 93-1520.

United States Court of Appeals First Circuit.

Heard Oct. 5, 1993.

Decided Nov. 16, 1993.

William O. Hennessey, Manchester, NH, with whom Richard A. Savrann and Burns & Levinson, Boston, MA, were on brief for appellant.

Martin J. O'Donnell, with whom Cesari and McKenna, Boston, MA, were on brief, for appellee.

Before CYR, Circuit Judge, BOWNES, Senior Circuit Judge, and BOUDIN, Circuit Judge.

BOWNES, Senior Circuit Judge.

Plaintiff-appellant, The Boston Beer Company, sought to enjoin defendant-appellee, Boston Beer Works, from using the words "Boston Beer" in its name, and from using the word "Boston" in connection with any of its beers. Appellant contended that appellee's name was confusingly similar to its own, and would mislead the public into thinking that Boston Beer Works' products or services originated or were associated with those of The Boston Beer Company. The district court rejected this claim, concluding that appellant's marks "Boston Beer," as used in its name, and "Boston," as used in connection with a number of its products, were not entitled to trademark protection. We affirm.

I. BACKGROUND

Appellant is a beer manufacturer. In 1985 appellant began brewing Samuel Adams Boston Lager at a brewery in Pittsburgh, Pennsylvania under the name "Boston Beer Company." The Pittsburgh facility was independently owned, and appellant operated it as a contract brewer, namely, one who engages another to manufacture beer in a brewery owned by the other. Presently, appellant has contract breweries in Pittsburgh, Utica, New York, and Portland, Oregon.

In November 1988 appellant first began to brew its own beer at a brewery located in Boston. This also marked the first time that appellant actually brewed any beer in the city that shares its name. Appellant has, however, always called Boston its corporate home, and virtually all of its assets and non-sales employees can be found in Massachusetts.

Appellant's "Boston" brews are not limited to Samuel Adams Boston Lager. In fact, appellant has what it refers to as a "family" of "Boston" beers. In addition to Samuel Over the past five years appellant has spent substantial amounts of money promoting its products in the Boston area. From 1988 through 1992, appellant spent approximately $350,000 in advertising on major Boston radio stations. Among the various other promotional means used by appellant are billboards, print advertising, and sales of promotional materials such as coasters, balloons, hats, table tents and table tent holders. By 1992 appellant's total sales in the Boston area had exceeded $3 million and its total sales had exceeded $20 million.

                Adams Boston Lager, other members of this family are Boston Lightship, which appellant began marketing in September 1987, and Samuel Adams Boston Ale, which appellant began marketing in October 1988. 1  Appellant's beers are marketed and distributed throughout the United States and abroad.  Appellant sells its beers to restaurants, bars, package stores and grocery stores for resale;  it does not make any sales directly to the public
                

Appellee is a restaurant and brew pub. On April 10, 1992, it opened for business on Brookline Avenue in the Kenmore Square section of Boston, directly across the street from Fenway Park, home of the Boston Red Sox. As a brew pub, appellee is a licensed restaurant that brews beer on-site for consumption by its patrons. One of the beers brewed by appellee is named "Boston Red." In addition to brewing and serving its own beers, appellee offers a wide range of food.

Appellant commenced this action on April 14, 1992 alleging trademark and trade name infringement, misappropriation and unfair competition pursuant to Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), the general laws of the Commonwealth of Massachusetts and common law. The first amended complaint alleged, inter alia, that appellee's "adoption of 'BOSTON BEER WORKS' made with knowledge of Plaintiff's prior use of the trademark and trade name 'BOSTON BEER COMPANY' and its 'BOSTON BRAND' family of trademarks...." constitutes a violation of Sec. 43(a) of the Lanham Act. First Amended Complaint at p 17. On April 15 appellant moved for a temporary restraining order to stop appellee from using the names "Boston Beer Works" and "Boston Red." The motion was denied the same day.

On April 21 appellant moved for a preliminary injunction. After two days of hearings and argument the district court denied the motion. In a Memorandum and Order dated June 18, 1992 (the "June Memorandum"), the district court found that the appellant's marks were not entitled to trademark ² protection.

The district court found first that "plaintiff's 'BOSTON BEER' mark as used in its name 'BOSTON BEER COMPANY' is sufficiently descriptive so as not to be considered generic and thus unprotectable." June Memorandum at 9. Next, the court found that "plaintiff's 'BOSTON' mark as used in its 'SAMUEL ADAMS BOSTON' beers and its 'BOSTON LIGHTSHIP' beer is a descriptive term." In fact, the court found that appellant did not even contend that its marks were anything but descriptive. Id. Therefore, the court stated, in order to satisfy its burden of establishing that its marks are entitled to trademark protection, "[p]laintiff must still make a showing, under a likelihood standard, that its name and marks have acquired secondary meaning." Id.

After reviewing the relevant preliminary injunction considerations, the court concluded that appellant had "not shown a likelihood of establishing by a preponderance of the evidence a secondary meaning for 'BOSTON BEER' and 'BOSTON.' " Id. at 15. Specifically As far as the labels appearing on each of appellant's three "Boston" beers, the court noted that "Boston" did in fact appear in each of the beers' names. In addition, the court found that each beer's bottle label contained an illustration or logo, and that, on bottles of Samuel Adams Boston Lager and Boston Lightship, the words "Samuel Adams" and "Lightship" were in larger print than the words "Boston Lager" and "Boston," respectively. Finally, the court found that the name "Boston Beer Company" appeared at the bottom of all appellant's labels in a smaller type than either the illustration or the other words on the label.

                the court found that although appellant had been using the name "Boston Beer Company" and the term "Boston" in connection with Samuel Adams Boston Lager since late 1985, not all of appellant's promotional materials contained "The Boston Beer Company" name, and those that did, always used it along with another of appellant's beer marks.  "For example," the court pointed out, "on the cards plaintiff prints to be inserted into table tents for restaurants and bars, the 'BOSTON BEER COMPANY' name appears on the bottom of the card with plaintiff's 'SAMUEL ADAMS' logo and its slogan 'The Best Beer in America' appearing at the top of the card."   June Memorandum at 11.  Moreover, the court found that all of the promotions that did include the company's name, "place[d] the name on the bottom and in smaller type than the rest of the words on the promotional item."   Id
                

It was undisputed that appellant engaged in substantial advertising and promotion of its products in the Boston area. The court found, however, that appellant's efforts were "focused in the direction of promoting a connection between 'SAMUEL ADAMS' and plaintiff's products[,]" and not towards establishing a connection between the terms "Boston Beer" and "Boston" and its beer products. Id. at 15-16. In reaching this result, the court examined appellant's billboards, radio advertisements, various promotional paraphernalia, and a promotional brochure. Finally, the court pointed out that the vast majority of appellant's advertising is directed towards its best-selling brand, Samuel Adams Boston Lager, and that appellant produces other "Samuel Adams" beers that are not part of its "Boston" family. As the court also observed,

[t]he fact that plaintiff produces other Samuel Adams beers, with the same Samuel Adams logo as appears on its "Samuel Adams Boston Lager" and "Samuel Adams Boston Ale" beer labels, but without the "BOSTON" family name, reduces the likelihood that a consumer will associate "BOSTON" or "BOSTON BEER" with plaintiff's products.

June Memorandum at 14-15. In summary, the court found that, notwithstanding the duration of appellant's use of the "Boston Beer Company" name and the term "Boston" in connection with three of its products, it had not directed its advertising and promotional activities to creating a connection between "Boston Beer" and its products, and had not made efforts at promoting a connection between "Boston" and its products, and therefore it had not shown a likelihood of establishing secondary meaning.

On February 9 and 10, 1993 a non-jury trial was held, at the conclusion of which the court gave its decision from the bench. The sole issues litigated were: (1) whether secondary meaning had attached to "Boston" and "Boston Beer," and (2) if so, whether a likelihood of consumer confusion existed. Appellant's principal evidence at trial consisted of a consumer survey.

The survey was conducted among 400 "beer drinkers" from the greater-Boston area who were split into two groups of 200. Each group was provided with a choice of approximately 20 beers and asked to identify the beer or beers produced by each of three different "beer companies." Both groups were asked about the "Latrobe Brewing Company" and the "Anheuser-Busch company." One group was asked about Boston Beer Company and the other about Boston Beer Works. Included on the list were appellant's three "Boston" beers which appeared as "Samuel Adams beer," ...