Bear Republic Brewing Co v Central City Brewing Co., Civil Action No. 10-10118-RBC, Memorandum and Order (D. Mass. June 7, 2010) (Collings, M.J.) [Preliminary Injunction].

Plaintiff Bear Republic Brewing Co. (“Bear Republic”), owner of the marks RACER 5 and RED ROCKET, sued defendant Central City Brewing Co. (“Central City”) for trademark and trade dress infringement and moved for a preliminary injunction to preclude Central City from using its mark RED RACER.

To assess whether Bear Republic was entitled to preliminary relief, the Court applied the First Circuit’s eight factor test for establishing likelihood of confusion. The District Court (Collings, M.J.) determined that Bear Republic failed to establish that it was likely to succeed in proving confusion between Bear Republic’s and Central City’s marks, and thus, denied Bear Republic’s motion for preliminary injunctive relief.

In determining the likelihood of confusion between the parties’ respective marks, the Court emphasized the analysis of the similarity of the marks. Though Bear Republic asserted that the likelihood of confusion analysis should focus on the dominant word portion of the marks, the Court instead analyzed similarity of the marks “on the basis of the total effect of the designation, rather than a comparison of individual features.” With reference to Bear Republic’s RACER 5 mark, the Court found that although the parties’ products share the term “RACER” and use a comparable font and color scheme, prominent features of the label designs and trade dress of the marks (e.g., Bear Republic’s checkered background and Central City’s “pin-up girl”) “look so different as to distinguish sufficiently the products.”  

In reference to Bear Republic’s RED ROCKET mark, the Court similarly determined that the marks are not so similar as to cause confusion. Though the parties’ products share the term “RED”–also noted by the Court to be descriptive of a style of beer–with a word conveying movement and speed, the Court found this similarity is insufficient to overcome the overall differences between Central City’s vintage “pin-up girl” and Bear Republic’s prominent use of a rocket ship.

Bear Republic also presented evidence of actual confusion to show that consumers would be confused as to the source of the goods. Upon RED RACER beer being first imported into Massachusetts, a local Bear Republic distributor claimed that he initially assumed that Central City’s RED RACER beer was a Bear Republic product. Further, the beer distributor alleged that he heard a customer proclaim that RACER 5 was being sold in cans (Bear Republic’s’ RACER 5 beer had not previously been sold in cans) while referring to Central City’s RED RACER beer. On another occasion, a customer asked the beer distributor if Central City’s RED RACER beer was a Bear Republic product. Nonetheless, the Court found this evidence unconvincing to show evidence of actual confusion as none of the instances actually led to a loss of sales or customers. Further, even assuming that these situations threatened Bear  

Republic’s goodwill, the Court determined that such sparse instances of actual confusion are insufficient to support a general finding of a likelihood of confusion. Finally, the Court concluded that RACER 5 was a strong mark deserving of broad protection while RED ROCKET was a weak mark. Indeed, the Court noted that identical competing products were also sold under marks which included the phrase RED ROCKET. Though the Court also found that the parties’ products were identical and were sold to similar customers through similar channels of trade, the Court ultimately determined that the lack of similarity between Bear Republic’s RACER 5 and RED ROCKET marks and Central City’s RED RACER mark mitigated against a finding of likelihood of confusion.  

Because Bear Republic failed to demonstrate a likelihood of confusion, the Court also found that Bear Republic would likely not suffer irreparable harm if the injunction were denied, while Central City would suffer significant actual economic harm if enjoined from selling beer in the United States.