Oasis Texas Brewing Company, an Austin, TX brewery, settled a trademark dispute with New Belgium Brewing, makers of the well known Fat Tire beer.
According to the Houston Chronicle, the settlement allows Oasis to use the term “Slow Ride” on a beer within the state of Texas only, but may not call the same beer “Slow Ride” outside of Texas.
The dispute arose in 2014, when Oasis began selling Slow Ride pale ale. However, New Belgium filed for an intent to use trademark application, planning to sell a beer with the same name.
According to the Houston Chronicle, “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.”
The common law right Oasis claimed were related to its actual use of the mark in commerce within Texas, meaning it was allegedly the first to use the Slow Ride name in the marketplace even though New Belgium was the first to file a trademark application (under the 1B filing basis for intent to use).
In short, it is not enough to simply think of a term first or register the term first, you must also actually use the term (that is, the trademark) “in commerce.” For basic information, see the USPTO website basic fact presentation here.
Because Oasis didn’t file for federal trademark registration, the Chronicle noted that its rights only extend to the market where it was selling the beer: Texas.
The takeaway, of course, is to always properly research names and terms before use.