As seen in the Houston Chronicle –
Representatives with New Belgium, which also produces the Fat Tire label, said in a The sparring match between the two companies began in 2014 when Oasis Texas began selling its Slow Ride beer, a pale ale.
New Belgium filed for a trademark, as it planned to begin selling a lower-calorie India pale ale, or IPA, with the same name. Its trademark request was granted.
Late in 2014, New Belgium notified Oasis Texas that it had the trademark. Oasis fired back with a cease and desist letter asserting “common law” rights to the Slow Ride name because its beer was available for sale days before New Belgium’s application.
Schleder said Oasis Texas made offers to New Belgium, but the two sides didn’t reach an out-of-court agreement.
New Belgium in 2015 filed suit against Oasis Texas in federal court in Colorado. A judge there later ruled Colorado wasn’t the proper venue, so New Belgium filed again in a Texas federal court.
At the heart of the battle was who would get to exclusively sell Slow Ride beer in Texas’ flourishing beer market. Shipment data compiled by the Beer Institute, a national trade organization, shows Texas’ was second only to California in shipment volume in 2015.
Texas accounted for 20.1 million of the 205.4 million barrels of beer shipments nationally, eclipsing Colorado’s 3.6 million barrels, said Bart Watson, chief economist with the Brewers Association, a national group that promotes independent breweries.
Candace L. Moon, an attorney specializing in the craft beer industry, said naming conflicts can be common in the rapidly growing industry but typically are worked out between brewers.
“When some of these guys get bigger, there’s more at stake,” Moon said. “There’s a certain level when your trademarks have more and more value, and you’ve really got to back them up, stand behind them and police them.”
In the U.S., whoever is first to use a product name takes priority over whoever files first for a trademark, which Moon said can generate territorial issues.
Since Oasis didn’t have a federal trademark, its rights only extend where its market exists: Texas.
That’s something that will be a lingering issue for the craft beer industry, Schleder said.
Oasis Texas was able to prove first use of the Slow Ride name, but it was being sold in major metro markets only in Texas. Therefore, the agreement limits Oasis’ sales under the Slow Ride name to within Texas, and if the beer is sold in other states, Oasis must do so under a different name.
“It won best new beer in Austin the year it came out because of the way it tasted, not because of its name,” Schleder said.
Schleder added that the conflict with New Belgium provides a cautionary tale for other young breweries to avoid costly legal battles – Oasis spent “hundreds of thousands” of dollars – by researching names and trademarking their creations.