Genesee Brewing Company v. Stroh Brewing Company

In January 1994, Genesee Brewing Company (plaintiff) introduced JW Dundee’s Honey Brown Lager, which it referred to simply as Honey Brown. This was the first beer to be marketed with a brand name that included the words Honey Brown, and consumers adopted that convention, with many drinkers and menus referring to Genesee’s product as Honey Brown. In early 1996, Stroh Brewing Company (Stroh) (defendant) introduced its Red River Valley Honey Brown Ale to compete with Genesee. Like Genesee, Stroh emphasized Honey Brown on its label and in its advertising. Moreover, Stroh’s marketing material specifically targeted Genesee, Stroh offered coupons for its product to certain supermarket customers that bought Genesee’s product, and many former Genesee sellers switched to Stroh for their Honey Brown product. In October 1996, Genesee sued Stroh, seeking a preliminary injunction based on, among other things, Stroh’s alleged violation of § 43 of the Lanham Act by appropriating Genesee’s trademark and engaging in unfair competition. The district court denied Genesee’s request for a preliminary injunction because, among other things, Genesee was unlikely to succeed on its claims. With respect to the trademark claim, the district court held that Honey Brown was generic—and thus could not be trademarked—because Genesee’s beer was a new product that is different from others in its product class and competitors must be able to use the common descriptive words Honey Brown to describe their own products with similar attributes. With respect to unfair competition, the district court held that Stroh’s lack of bad faith doomed that claim. Genesee appealed. With respect to trademark infringement, it argued that the district court should have considered whether the primary significance of Honey Brown to consumers was its source (i.e., Genesee) and not whether competitors needed to use Honey Brown to describe their products. With respect to unfair competition, Genesee argued that its claim had merit even if Stroh did not engage in bad faith because it presented evidence that Stroh did not take all reasonable steps to avoid consumer confusion.