OCEAN CITY — A battle over the use of the trademark “Shorebilly” is brewing this week after a resort area retailer who applied for and received a patent for the term over three years ago last week filed a civil suit against a Boardwalk brew pub allegedly infringing on the registered mark.
In 2008, Teal Bay Alliances, a resort-based retailer, began marketing and distributing various items of clothing prominently featuring the term Shorebilly. Teal Bay marketed and sold Shorebilly items including shirts, hats, sweatshirts and other items of clothing over its Internet website and also distributed the merchandise to local retailers. The brand was later expanded to include stickers, decals, mugs, tote bags, coolers, thermos bottles, key chains, clocks and even ornaments.
In April 2010, Teal Bay filed an application to register the trademark Shorebilly with the U.S. Patent and Trademark Office and the application was approved in October 2011. Teal Bay then continued to market and distribute Shorebilly goods under its officially registered trademark. However, last fall it came to Teal Bay Alliance’s attention that Southbound One, Inc. and owner Danny Robinson intended to open a new brew pub on the Boardwalk operating under the name Shorebilly Brewing Co.
Shorebilly Brewing Co. opened in May and has been up and running all summer with rave reviews. Southbound One also filed an application with the U.S. Patent and Trademark Office for the trademark Shorebilly, but was informed by the federal agency the mark was already registered and its rights were owned by Teal Bay. Nonetheless, Southbound One moved forward with the opening of the brew pub and restaurant under the name Shorebilly Brewing Co.
After attempts at some sort of reconciliation and pleas for the brew pub to consider a different name, Teal Bay Alliances last week filed suit in U.S. District Court against Southbound One, alleging trademark infringement and unfair competition. The complaint urges the court to issue a preliminary and permanent injunction enjoining Southbound One and Shorebilly Brewing Co. from using the trademarked name for the restaurant and brew pub and for any of its merchandise.
The plaintiff is also urging the court to require Southbound One to account for and pay over to Teal Bay Alliances all profits it received during its use of the trademark Shorebilly, and given the intentional and willful use of the trademark, those monetary damages should be tripled. The plaintiff is also seeking punitive damages against Shorebilly Brewing Co.
Robinson said this week the suit is frivolous and that a meeting had been scheduled for Wednesday with all of the parties to begin working out a solution. That meeting was canceled however and has been rescheduled for next week. In the meantime, the suit filed last week in U.S. District Court is moving forward with the typical machinations of the court process.
According to the complaint, it came to Teal Bay Alliance’s attention last fall that Robinson and Southbound One intended to open the Boardwalk brew pub operating under the name Shorebilly Brewing Co. and its agents sent a letter to Southbound One urging it to reconsider the use of the patented mark.
“It has recently come to my client’s attention that you intend to use Shorebilly in connection with a new bar and restaurant in Ocean City,” the letter reads. “While my client wishes nothing but success for your company’s new commercial endeavor relating to the beer, brewery and restaurant you hope to bring to Ocean City, we believe that undertaking will have to proceed under a new mark. As already noted, we hope that your future commercial operation is successful, but my client must take any necessary action to protect the distinctive quality of its own mark in the Patent and Trademark Office.”
According to the complaint filed last week, Southbound One proceeded with the opening of the Shorebilly Brewing Co. even though it knew Teal Bay Alliance owned the trademark rights to the term Shorebilly.
“Well prior to its own initial use of the mark Shorebilly Brewing Co., the defendant was fully and actually aware of the plaintiff’s use of the Shorebilly mark in the Ocean City community as well as the plaintiff’s ownership of the federal registration for that mark,” the complaint reads. “Recklessly disregarding the plaintiff’s known rights in the Shorebilly mark, the defendant nevertheless moved forward with its use of an infringing name and mark in Ocean City.”
According to the complaint, Southbound One’s adoption and use of the mark Shorebilly Brewing Co. in connection with the sale of items of clothing is likely to cause confusion over the origin of those goods. Both parties’ marks not only use the identical and distinctive term Shorebilly, but both are used in connection with legally identical products including various items of clothing.
“The defendant’s bad faith and reckless conduct in using its infringing mark in connection with clothing items was and is willful and intentional, not only when it initially adopted and began using that mark, but its continued use following the plaintiff’s protests,” the complaint reads.