As seen in the Houston Chronicle –
An Austin brewery has settled its trademark fight with a Colorado craft beer giant, winning sole rights to market its brand-name brew in Texas’ lucrative beer market.
Oasis Texas and Colorado-based craft beer giant New Belgium Brewing, Co., agreed Thursday that Oasis Texas can sell its “Slow Ride” beer across the Lone Star State but must use a different name when selling the product elsewhere, said Max Schleder, general manager for Oasis.
“We’re thrilled with the win, and we can’t wait to get back to making great beer,” Schleder said.
Representatives with New Belgium, which also produces the Fat Tire label, said in a statement that they are comfortable with the settlement.
“We had high hopes that we could work together and coexist, but the team from Oasis was opposed to that and so we had to seek clarification through the court,” Christine Perich, CEO of New Belgium Brewing, said in a statement on the company’s website. “In an effort to put this behind us and move forward with the business of running our business, we’re agreeing to Oasis’ use of the mark in Texas, and we retain exclusive rights for the rest of the U.S.”
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.