On April 29, Andrew Cobb received a cease and desist letter, informing him that he could not use the word “Butchertown” in the name of his new business because it had already been trademarked by a Louisville-based distillery.
Cobb has plans to open a small-batch craft brewery in the Mellwood Art Center and he’d like to name it Butchertown Brewing after the Louisville neighborhood east of downtown. He said he was disappointed and surprised to get a notice from Copper & Kings American Brandy Company, informing him that the company owns the registered trademark of “Butchertown” in several categories of goods and services, and Cobb could not use it.
“It didn't seem right that a company could own the name Butchertown,” Cobb said. ”It just seems wrong for a company to swoop in and claim the name of a neighborhood and prevent small businesses from using that.”
According to the United States Patent and Trademark Office’s electronic database, Cobb filed an application to register a trademark for Butchertown Brewing in late October 2019. He said he filed because he wanted to ensure another business didn’t open using the exact same name as his, but in no way was he trying to stake claim on “all of Butchertown.”
The office rejected his application on the grounds of “likelihood of confusion” with trademarks already registered by Copper & Kings. Filings show that the Louisville distillery registered the trademark in categories like carbonated drinks and alcoholic beverages, such as beer, ale, lager, stout, porter and shandy. Those registrations date back to 2015.
Copper & Kings co-founder Joe Heron said the company has been in Butchertown since 2014, adding that they still see themselves as a small shop, employing 20-plus people.
“We believed in the neighborhood and we believed in that name enough to celebrate it and put it on our products and apply for a registered trademark because that's what you do with brand names,” Heron said. “We had the foresight to see that that name had value.”
Cobb also sees the value in the Butchertown name; the neighborhood is one of Louisville's oldest, dating back to the late 1700s. He said he wanted to name his brewery after the neighborhood “because of the rich history” and so people would know the general location of his business.
“It's been one of the best neighborhoods in the city,” Cobb said. “I've lived here and love it here.”
Heron said it’s the company’s obligation and duty to defend its trademarks, as described by the USPTO, and it has had to protect its trademark in the past when other businesses have wanted to use the “Butchertown” name for products and services that fall into similar categories of Copper & Kings’ registered trademarks.
Recently, Cobbfiled a petition through the USPTO to cancel Copper & King’s registered “Butchertown” trademark, and earlier this week, began raising money to pay for legal fees.
“I'd like to see it through,” he said of what will likely be a long process, adding that he'll accept the outcome whatever it is.
Can You Trademark A Neighborhood Name?
In short, it’s complicated.
“Trademarks are source identifiers,” said Iris Gunther, manager for enforcement, external relations at the International Trademark Association (INTA). “They're supposed to identify and distinguish your product or service from others and, therefore, it needs to be distinctive.”
So a company can’t call a brand of pencils “Pencil,” she said, as an example. And there are a number of other things that are generally excluded from qualifying for a registered trademark, including one that is “geographically descriptive of the origin of the goods/services.”
For example, a business shouldn’t be able to register a trademark for just “Louisville.”
Gunther, who clarifies that she’s not a U.S. lawyer and can’t comment directly on this dispute, said, while it’s true that a business can’t generally trademark a “geographically descriptive,” that trademark law “is all about the details.”
“Trademark law is, by its nature, very detail-oriented,” she said. “So generally, [it’s] right to ask whether it's correct that somebody could monopolize a geographic name or designation, but at the end of the day, it will definitely depend on the details: has this company maybe acquired some distinctive secondary meaning, were there other factors that played into that decision [to grant the trademark registration].”
Erin Hennessy, a partner at Haynes and Boone law firm in New York and acting counsel for the INTA board, said after looking through Copper & Kings' 2013 application to register the trademark, she's "surprised to see that the application made it through without the examiner raising an issue based on the fact that the term potentially had a geographic connotation.”
"The general concept, in terms of your everyday sort of geographical terms, those should not be proprietary... if the geographic term conveys a geographical location to a reasonable consumer," she said. “Everybody needs to be able to describe where their businesses are, so that’s the underlying trademark law concept as to why you can't claim proprietary rights or exclusive rights to geographic terms."
Litigation over the Butchertown trademark dispute could be a long process, maybe a year or more. In the meantime, Cobb is moving forward with his brewing company. He expects to have his license by the end of the month, and his first release out in October.