Beach brewery wins 'Shorebilly' trademark lawsuit

BALTIMORE -- A federal judge rejected a couple's claims of trademark infringement by a Boardwalk brewery over the name "Shorebilly," and also revoked the couple's trademark, which he ruled was obtained fraudulently.

U.S. District Court Judge Marvin J. Garbis found in favor of Danny Robinson, the defendant and owner of the former Shorebilly Brewing Co. The plaintiffs are Marcus and Barbara Rogerson, doing business as Teal Bay Alliances, LLC. They filed suit against Robinson and his Southbound One Inc. in July 2013 to defend their trademark for the term "Shorebilly," which they used on T-shirts and stickers.

In the opening lines of the 54-page opinion, the judge called the plaintiff's lawsuit "utterly meritless."

"Teal Bay had no valid common law trademark infringement claim against Southbound," the judge wrote. "Teal Bay did not create the word 'shorebilly,' had no 'patent' on the word itself, and it was not the first to use the word commercially. Teal Bay had, and has, no right to interfere with (the brewery's) use of the name."

The judge ordered the U.S. Patent and Trademark Office to cancel Teal Bay's federal trademark registration. Robinson still technically owns the trademark, though he changed the name of his operation to Backshore Brewing Co. in the middle of the lawsuit.

Garbis also ordered the plaintiff pay $30,855 in damages. Robinson said that won't begin to cover his $500,000 in legal fees. He said the plaintiff's intent was to attach royalties to his brewery.

"They wanted for me to pay them every time I used the word, or they were going to sue me. And basically I said, sue me," he said. "This is the industry of litigation. They see a fish on the line, and they yank the rod."

When reached by phone at her West Ocean City home, Barbara Rogerson declined to comment. Her attorney, Samuel Littlepage, says he and his client on Feb. 9 filed an appeal. Littlepage also declined further comment.

The lawsuit

Teal Bay Alliances filed a four-count civil lawsuit against Southbound One Inc., Robinson's company that owns the brewery, in U.S. District Court in Baltimore on July 26, 2013. Teal Bay Alliances alleged trademark infringement and unfair competition under both federal law and Maryland common law.

Court documents state Teal Bay Alliances LLC was formed in 2008 and had been using the Shorebilly mark since spring 2010. The brewery opened May 29, 2013.

According to U.S. Patent and Trademark Office records, Teal Bay planned to use the Shorebilly term for clothing, namely hats, T-shirts, sweatshirts and golf shirts. Southbound One applied for the name for use in a bar, nightclub, brew pub, brewery and restaurant services.

The plaintiffs alleged that sales of Shorebilly Brewing Co. merchandise, including T-shirts and stickers, were infringing on the Teal Bay trademark. Robinson said he had to cease sales of all Shorebilly Brewing Co. merchandise, and ended giving away much of it to charity, especially the apparel.

However, the court ultimately ruled that the plaintiffs were not entitled to trademark protection over the word "Shorebilly" because they never had any true claim to it. The judge said Teal Bay obtained their trademark by misrepresenting to the U.S. Patent and Trademark Office the design they would be using for commercial purposes.

Here's how this works: patent regulations specifically require people applying for trademark to provide an exact specimen of the trademark as it will be used in commerce. At first, the Rogersons provided a drawing of what their T-shirts would look like, but never gave an actual example of a real T-shirt. This is a violation of patent regulations.

To fix that, the couple did supply a photo. But it was of a different T-shirt design, one that never actually went to market. This is also against the rules, the judge said.

"The court finds that these actions were taken with the intent to deceive the PTO into making a determination... based on a specimen showing a materially different use than was on the actual goods that were sold in commerce," the judge wrote.

A footnote in the opinion also says Teal Bay "falsely stated to the state of Maryland that it had no inventory in order to evade its business personal property tax liability."

Reverse confusion

The plaintiffs also had argued that people would think Teal Bay and Shorebilly T-shirts would be somehow connected with the brewery, but the judge also said there was no evidence that such "reverse confusion" may occur, and that the two sides were never in competition.

"The court does not find any indication that a customer who bought a Shorebilly Brewing Company promotional T-shirt would be likely to think that the source was Teal Bay," the judge wrote. "Prior to (the brewery's) first use in commerce of the name... Teal Bay was doing little, if anything, more than offering a few T-shirts for sale at a Shell station and out of the trunk of an automobile."

Robinson said "nobody would have known and nobody would have cared" about the fraudulent trademark if the couple hadn't brought the lawsuit in the first place.

He said he isn't relishing the legal victory.

"I wish it had never happened in the first place," Robinson said.

The documentary

The case caught the eye of two Maryland-based documentary filmmakers. They started out with plans to interview Robinson for a film about craft brewing, but instead were captivated by the built-in drama of the Shorebilly lawsuit.

Filmmakers Chip Hiden and Alexis Irvin, of Silver Spring, followed Robinson on camera for more than two years, even before he opened his Boardwalk brewery in May 2013. They were down to their final edits early this year when the judge's ruling came down, and they managed to squeeze in a closing interview with their subject.

"Now they have an ending to their documentary," Robinson said.

The crowd-funded film, titled "Blood, Sweat, and Beer," will debut March 1 at the D.C. Film Festival.