Frank Brunckhorst Co. v. G. Heileman Brewing Co.
| Decision Date | 22 December 1994 |
| Docket Number | No. CV-94-3700 (CPS).,CV-94-3700 (CPS). |
| Citation | 875 F. Supp. 966 |
| Parties | FRANK BRUNCKHORST CO. et ano., Plaintiffs, v. G. HEILEMAN BREWING CO., INC. et ano., Defendants. |
| Court | U.S. District Court — Eastern District of New York |
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Hoffman & Baron, Jericho, for plaintiffs.
Sonnenchein Nath & Rosenthal, New York City, for defendants.
This is an action alleging violation of the Lanham Act, 15 U.S.C. §§ 1051 et seq., trademark infringement and false designation of origin, 15 U.S.C. §§ 1114, 1125(a), and common law trade dress infringement. The action is brought by plaintiffs, Frank Brunckhorst Co. ("Brunckhorst") and Boar's Head Provisions Co., Inc. ("Provisions"), against defendants, G. Heileman Brewing Co., Inc. ("Brewing") and Heileman Holding Company ("Holding" and collectively with Brewing, "Heileman"). Jurisdiction exists over the case under 28 U.S.C. § 1331 and 15 U.S.C. § 1121, and principles of pendent jurisdiction.
The matter is currently before the Court on plaintiffs' motion for a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure. Plaintiffs seek an order enjoining defendants' continued advertising and sale of beer under the name "Boar's Head" pending trial of this action.
The parties have submitted affidavits and documentary evidence in support of and in opposition to this motion. Because the facts are essentially undisputed and because the parties agree that no hearing is needed to assess credibility or weigh evidence, no hearing was held. Nor is one required. Drywall Tapers & Pointers Local 1974 v. Local 530, 954 F.2d 69 (2d Cir.1992); Fengler v. Numismatic Americana, Inc., 832 F.2d 745, 747 (2d Cir.1987); SCM v. Xerox, 507 F.2d 358 (2d Cir.1974); CFTC v. American Bd. of Trade, Inc., 473 F.Supp. 1177, 1178 n. 3 (S.D.N.Y. 1979).
For the reasons that follow, plaintiff's motion for a preliminary injunction is granted. What follows sets forth the findings of fact and conclusions of law on which the determination to grant these motions is based as required by Rule 65 of the Federal Rules of Civil Procedure.
Plaintiffs Brunckhorst and Provisions are the successors to a family business that was started in New York in 1905 by Frank Brunckhorst. Brunckhorst markets and sells meats, cheeses and other food products ("Boar's Head Products") under the marks BOAR'S HEAD, BOAR'S HEAD BRAND and a logo that includes the head of a boar inside a circle or oval (the "Boar's Head Logo" and, collectively with the other marks, the "Boar's Head Marks"). Provisions acquires and processes raw materials for sale exclusively to Brunckhorst. Independent distributors purchase food products from Brunckhorst and in turn sell them to delicatessens and other food markets for distribution to the public.
Defendants Heileman brew and sell beer under a variety of tradenames. Among these is the Blitz-Weinhard Brewing Company, which has been in existence since 1856 selling beer under the Weinhard name. Defendant Brewing is a wholly owned subsidiary of defendant Holding.
Brunckhorst has been marketing and selling Boar's Head Products continuously since 1905. Included in the Boar's Head product line are slicing meats (such as ham, roast beef, bologna, salami, pastrami, and turkey), cheese, hot dogs, hamburgers, mustard, sauerkraut and horseradish. The Boar's Head Marks have been used in conjunction with the Boar's Head Products for nearly the entire century that Brunckhorst has been in business.1 A photograph produced by plaintiffs depicts a horse-drawn wagon presumably carrying Brunckhorst's Boar's Head Brand products with the Boar's Head Logo prominently displayed on the wagon. Products sold under the Boar's Head Marks are at present distributed by Brunckhorst throughout much of the United States by distinctive red and black trucks bearing the Boar's Head Logo on the side.
Brunckhorst is the owner of a federal trademark registration (U.S. Trademark Reg. No. 1,789,549), dated August 31, 1993, for the mark BOAR'S HEAD BRAND for slicing meats and cheeses sold in the United States.2 Although the entire mark as registered is BOAR'S HEAD BRAND, protection for the word "Brand" is disclaimed in Brunckhorst's federal trademark registration. Moreover, much of Brunckhorst's advertising refers to the products simply as Boar's Head Products. Brunckhorst has also filed a federal trademark application (U.S. Trademark Application No. 74/450,531) for the Boar's Head Logo for slicing meats and cheeses, packaged hamburgers, condiments, frankfurters and bacon, and packaged sauerkraut.
Brunckhorst markets and sells its food products under the Boar's Head Marks in over thirty states. Of particular significance for purposes of this motion, these states include Colorado, California, and Washington, where Boar's Head Products have been sold since at least 1984, 1985, and 1988, respectively. In the five year period between January 1, 1989, and December 31, 1993, Brunckhorst has enjoyed over one billion dollars in sales of Boar's Head Products throughout the United States.
The Boar's Head Marks are displayed prominently on Boar's Head Products. The packaging or labels used with Boar's Head Products generally position the mark BOAR'S HEAD BRAND immediately adjacent to the Boar's Head Logo. Brunckhorst advertises its Boar's Head Products on radio and television, in print media, and in point-of-sale advertising, using the Boar's Head Marks. The company has spent over eleven million dollars on advertising in the past five years, including advertising in the states of Colorado, California, and Washington.
The distributors of Boar's Head Products also engage in advertising of the products at a cost not included in the $11 million figure spent by plaintiffs alone. Rocky Mountain Provisions, a Colorado distributor of Boar's Head Products, for example, has spent over $100,000 since 1984 promoting Boar's Head Products using the Boar's Head Marks within that state.
Brunckhorst also makes available point-of-sale advertising displays to retail stores which carry Boar's Head Products. This advertising includes price markers, fliers, stickers, clocks, and display boards and is also not included in the $11 million figure referred to above. Of particular note for present purposes, these point-of-sale materials include beer mugs bearing the Boar's Head Marks, which are recommended to be used by retail outlets, placed on counter tops, and filled with Boar's Head Brand beef sticks. Brunckhorst has distributed thousands of such beer mugs since introducing them in 1988. Other beverage related promotional materials include beer steins, coasters, and Oktoberfest advertising materials, all prominently displaying the Boar's Head Marks.
With respect to the use of the Boar's Head Marks in connection with the marketing of beer, Brunckhorst was approached in October 1992 by Grolsch Importers, Inc. in an effort to establish a joint venture or licensing arrangement pursuant to which Grolsch would produce and distribute a beer under the mark BOAR'S HEAD. Brunckhorst declined this proposal after giving it serious consideration but remains open to other proposals to expand its business into the field of beer distribution.
Since its inception in 1905, Brunckhorst has attempted to establish and maintain high quality in its products, which has undoubtedly contributed to the company's success. Boar's Head Products are sold fresh by Brunckhorst to its distributors, who are required to carefully monitor their retail customers' handling of those products to insure that they are properly displayed and sold fresh to the consumer.3
Defendants market and sell beer under, inter alia, the Weinhard trade name. These beers include Henry Weinhard's Private Reserve and Weinhard's.
Defendants are the owners of a federal trademark registration (U.S. Trademark Reg. No. 1,363,650), dated October 1, 1985, for the design mark THE ORIGINAL BLUE BOAR BRAND for beer (the "Blue Boar Mark") and is also the owner of the federal trademark WEINHARD'S (U.S. Trademark Reg. No. 1,423,162), dated December 30, 1986, for alcoholic malt beverages. The Patent and Trademark Office has granted these marks incontestable status for beer and malt products.4
Defendants have used the Blue Boar Mark continually in commerce since 1984, when it introduced a line extension called Weinhard's Ale. Subsequent line extensions included Weinhard's Ice Ale, Weinhard's Draft, and Weinhard's Draft Light. The labels for these products prominently display the Weinhard tradename and the Blue Boar Mark directly above the words "Blue Boar." Defendants have used the Weinhard's tradename, the Blue Boar Mark and the boar motif in its advertising and promotions.
In April 1994, defendants introduced a beer under its Weinhard's label. This product is a red beer.5 The label for this new product prominently displays the Weinhard tradename and the Blue Boar Mark. The beer is sold under the trade name "Weinhard's Boar's Head Red" and has a circular logo adjoining the words "Boar's Head" with the Blue Boar Mark contained within ("Boar's Head Beer").
Defendants allege that Boar's Head Beer was intended as an extension of defendants' product line to capitalize on the Weinhard's name and the blue boar promotional materials, with the name "Boar's Head Red" intended to rhyme and be a memorable bar call. Unlike the other beers sold under the Weinhard's label, which carry the words "Blue Boar" beneath the Blue Boar Mark, Boar's Head Beer carries the words "Boar's Head" beneath the Blue Boar Mark. The name "Boar's Head Red" is used on the bottle cap of the Boar's Head Beer without any reference to Weinhard's, whereas Weinhard's Ale contains the name "Weinhard's Ale" on the bottle cap.
Boar's Head Beer was first introduced in...
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