OCEAN CITY — A Boardwalk brew pub last week filed a motion to dismiss the civil suit filed against it over the alleged infringement over the term “shorebilly,” y asserting the generic term is so firmly entrenched in the local vernacular that it cannot be afforded trademark protection.
In late July, Teal Bay Alliances, a resort-based retailer that five years ago began marketing and distributing various items prominently featuring the term ‘shorebilly,” filed a civil suit in U.S. District Court, alleging the recently opened Shorebilly Brewing Co. on the Boardwalk was infringing on its trademark. The complaint is urging the court to issue a preliminary and permanent injunction enjoining Southbound One, Inc. and its Shorebilly Brewing Co. from using the trademarked name for the restaurant and brew pub and for any of its merchandise. The suit 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.
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 2010. 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. The restaurant opened in May and has been up and running all summer. 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.
After attempts at some sort of reconciliation and pleas for the brew pub to consider a different name, Teal Bay Alliances in late July filed a civil suit in U.S. District Court against Southbound One, alleging trademark infringement and unfair competition. Last week, however, Southbound One filed an answer the complaint and a motion to dismiss the case, pointing out the term ‘shorebilly’ is so familiar to the public that it should be considered generic and therefore not subject to trademark protection.
“Hillbilly is to the hills as shorebilly is to the shore,” the motion to dismiss reads. “Both terms are commonly used to identify people who live in a certain place in accordance with a certain lifestyle. The term ‘shorebilly’ used in such a context is no more subject to trademark protection than the same items adorned with the word ‘hillbilly.’ Both terms are generic in the eyes of trademark law because neither conveys an indication of source and there is a common understanding of the meaning of each word from the viewpoint of the relevant public.”
The motion to dismiss filed this week attempts to point out the generic nature of the term.
“Generic terms are not entitled to trademark protection,” the motion reads. “This is because when a generic term is used, the source of the goods is unknowable and the goods cannot be distinguished from other products on the market.”
The motion to dismiss points out the term ‘shorebilly’ is now common on the Internet and other places and the term appears in different contexts with the same general meaning. For example, it appears as a common user name on a variety of online forums to describe individuals primarily living on Maryland’s Eastern Shore “that are the seashore cousins of hillbillies,” and that is also appears as the name for boats, menu items at various establishments, according to the motion.
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