Resort Brewery To Change Name, Avoid Legal Fight

Resort Brewery To Change Name, Avoid Legal Fight

OCEAN CITY — An Ocean City brewery and Boardwalk restaurant and bar will be changing its name after its owner decided this week to drop his challenge to a civil lawsuit filed in August by an Internet retailer alleging trademark infringement on the registered mark “Shorebilly.”
In August, Teal Bay Alliances, a resort-based retailer that markets and distributes various items of clothing and other merchandize prominently featuring the term Shorebilly, filed suit in U.S. District Court against Shorebilly Brewing Company alleging the popular brewery on the Boardwalk was infringing on its registered trademark.
Southbound One, Inc. and brewery owner Danny Robinson fought the suit, alleging, among other things, the term “Shorebilly” was generic and not subject to trademark protection.
However, a little over three months into the litigation, Southbound One, Inc. and Robinson decided this week to stop fighting the suit and move on. As a result, Robinson is currently looking for a creative new name for his brewery and brew pub.
“I made the decision to change the name of the brewery and the restaurant,” he said. “After a long battle, a battle I believe we could have won, I can’t spend another minute or another dollar fighting this. I have to focus my attention on the brewery and the restaurant.”
Robinson said he announced the decision to drop the suit and change the name on the Shorebilly Brewing Facebook page around 3 p.m. on Wednesday and encouraged friends and patrons to weigh in on a possible new name. Feeling a little dejected, Robinson left the computer alone for the rest of the day, but when he checked it again on Thursday morning, there were over 600 responses, which he said was uplifting.
“That made me feel a lot better about the whole thing,” he said. “The cool thing is that shows people are really passionate about this place and are emotionally attached to it. This place is more than just a silly word. It’s about the beer and the location and that VW bus and more importantly the people. All that won’t change because we’re changing the name.”
Robinson said he was seeking input on the new name from the patrons who have contributed to its success after the brewery opened in March and the Boardwalk brew pub opened in May.
“With our marketing, I always reach out to our patrons, or fans for a lack of a better word, for their input and ideas,” he said. “We often have contests to allow the fans to name the new beers. It makes them feel like they are a part of this and they are.”
In 2008, Teal Bay Alliances, a resort-based retailer began marketing and distributing various items of clothing prominently featuring the term Shorebilly. Teal Bay marketed and sold Shorebilly items including shirts, hats, sweatshirts and other items of clothing over its Internet website and also distributed the merchandise to local retailers. The brand was later expanded to include stickers, decals, mugs, tote bags, coolers, thermos bottles, key chains, clocks and even ornaments.
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 2011. 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. Robinson intended to open a new brew pub on the Boardwalk operating under the name Shorebilly Brewing Co.
After attempts at some sort of reconciliation and pleas for the brew pub to consider a different name, Teal Bay Alliances last week filed suit in U.S. District Court against Southbound One, alleging trademark infringement and unfair competition. The complaint urges the court to issue a preliminary and permanent injunction enjoining Southbound One and Shorebilly Brewing Co. from using the trademarked name for the restaurant and brew pub and for any of its merchandise.
Earlier this month, a new wrinkle appeared in the case when it was learned Bahia Marina and Fish Tales’ had been using the term Shorebilly Biker Club since 2007, long before Teal Bay Alliances received its trademark and certainly long before the lawsuit was filed. Southbound One asserted Fish Tales’ had issued to it a written license to use the term for the Shorebilly Brewing Company retroactive to Jan. 1, 2013, which predates the lawsuit and called into question the validity of Teal Bay Alliances’ claim.
Southbound One attorneys asked the court to adjust the discovery period to address the issue of the Fish Tales’ license first before tackling the larger issue of the alleged trademark infringement and the federal judge agreed. However, Robinson and Southbound One since decided to forego the fight and agree to change the name.
“Nevertheless, it is clear the validity of the license cannot be resolved in time for the defendant to meet deadlines regarding the distribution of its beer products and it will change its name in order to avoid any potential liability,” said Southbound One attorney James Astrachan in a letter to the judge filed yesterday. “The defendant does not intend to continue to using the Shorebilly name for its brewery or on clothing items and believes it is no longer necessary to prioritize discovery related to Fish Tales’ prior use and the license from Fish Tales’ to the defendant.”