OCEAN CITY — A federal judge last week ruled in favor of an Ocean City brewery in a civil suit over the use of the word “Shorebilly” but before the ink was barely dry on the opinion, the plaintiff filed an appeal this week.
In August 2013, 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 the recently opened Shorebilly Brewing Company, alleging the popular Boardwalk restaurant and bar was infringing on its registered trademark. Southbound One, Inc.’s Danny Robinson fought the suit, alleging, among other things, the term “Shorebilly” was generic and not subject to trademark protection.
As the case dragged through the legal process, Southbound One in November 2013 changed the name of its Boardwalk brew pub to Backshore Brewing Company after a spirited online renaming contest. However, 18 months after the suit was originally filed, U.S. District Court Judge Marvin Garbis late last month ruled in favor of Southbound One, essentially opining the case brought over the alleged infringement of the trademark for Shorebilly was meritless.
“The Court has, as set forth in the Bench Trial Decision issued herewith, decided that plaintiff Teal Bay Alliance has failed to prove any of the claims it asserts against the defendant Southbound One,” the opinion reads. “Judgment shall be and hereby is entered in favor of the defendant, Southbound One, Inc., against the plaintiff dismissing all claims with prejudice and ordering the United States Patent and Trademark Office to cancel the trademark registration issued to Teal Bay LLC.”
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, it later came to Teal Bay Alliance’s attention that Southbound One, Inc. and Robinson intended to open a new brew pub on the Boardwalk operating under the name Shorebilly Brewing Co.
“Teal Bay brought the instant case in federal court relying upon a trademark registration obtained by a means of material false representation to the U.S. Patent and Trademark Office,” the opinion reads. “Moreover, Teal Bay did not use its purported mark in commerce as a trademark prior to Southbound’s first use in commerce of the name Shorebilly Brewing Company. Furthermore, even if Teal Bay had obtained any trademark rights in the name Shorebilly as identifying a T-shirt supplier, it did not establish that Southbound would have infringed its rights by utilizing the name Shorebilly Brewing Company to identify its food and beverage business on promotional T-shirts using that name and a logo have no similarity to Teal Bay’s claimed trademark.”
While the court opined Teal Bay unnecessarily brought the trademark suit against Southbound One in the first place, it ruled the amount of legal fees awarded to the defendant was discretionary and would not be paid in full. For example, the judge opined Southbound One argued at one point an Ocean City marina had marketed the Shorebilly Biker’s Club prior to Teal Bay’s use of the term and had issued a license to the brewery to utilize Shorebilly. However, after considerable time and expense, Southbound One abandoned that portion of its defense and, consequently, the court will not award legal fees to the defendant for the expense of arguing that contention. In the end, the court agreed to award Southbound One just under $31,000 in legal fees, or that portion it spent arguing the essential merits of the case.
While the judge’s ruling in the case on Jan. 26 appeared to bring some measure of closure to the protracted legal battle, the debate moves on. On Tuesday, Teal Bay filed an appeal in federal court challenging the ruling.