News
Billings brewer mixes it up with Missouri bourbon maker over who gets to be Yellowstone’s finest – Who owns the names of Montana?
In 1997, Parisian fashion designer Claude Montana legally threatened Montana Knits, a family business making sweaters and caps out of cashmere goat hair, because he claimed exclusive trademark rights to the name "Montana."
ZooMontana in Billings faced a similar threat from the designer.
By JAN FALSTAD
Of The Gazette Staff
Now David Sherman Corp., a liquor distributor in St. Louis is threatening Yellowstone Valley Brewing Co., of Billings.
The corporation claims exclusive rights to the name "Yellowstone" and wants Yellowstone Valley Brewing to change its name and advertising.
When they opened the Feb. 24 letter, co-owner George Moncure and his partner Jay Shearer thought it was a joke, especially the part insisting they immediately send all their labels and packaging to St. Louis.
"My reaction was, ‘OK, I’ll do that right away,’ " Moncure laughed.
Then he reread the legal papers and started to worry.
"It’s too hard to stay in business and stay competitive," Moncure said, pointing to pet projects he is working on, like adding a pool table and expanding the small bar at the brewery at 2123-B First Ave. N.
The scholar with a Ph.D. in water chemistry turned brewer naturally reverted to his laid-back Montana style. After all, talking common sense has worked in similar disputes.
When YVB was starting out seven years ago, one of its five beers was going to be named "Adams Amber Ale" after the famous dry fly for fly fishing. However, The Boston Beer Co. complained, saying the name was too similar to the Samuel Adams beer it brews, so YVB agreed to change the beer’s name and chose "Wild Fly Ale."
That didn’t end the name controversy, though.
Next the owners of the national trademark of "Wild Cherry" contacted the brewery, worried about their use of the word "Wild." Moncure and Shearer promised to use the name on their beer only, not on any other products. The offer was cordially accepted and that was that, Moncure said.
This time, the company may not avoid big legal fees, although it is hard to determine if David Sherman is serious, especially since no one will return Moncure’s telephone calls.
"To me it’s just downright frustrating," he said. "It’s not easy to run a brewery in Billings, Mont. Now I have to deal with this thing that almost constitutes a lawsuit."
The battle over beer
The petition claimed that David Sherman Corp. owns the U.S. trademark for "Yellowstone" and said the Billings brewery’s use of Yellowstone will "confuse and mislead consumers" even though they are different products sold in different regions of the country.
The petition asked the U.S. Patent and Trademark Office to cancel YVB’s registered name. The St. Louis company also filed a separate cease-and-desist order against the brewery, which is the first step toward a federal lawsuit.
David Sherman Corp. distributes dozens of brands ranging from German wines to Everclear grain alcohol, to Rebel Yell bourbon and Margaritaville tequila.
One of its brands is Yellowstone Bourbon, a name that strangely was trademarked in 1931 during Prohibition.
The liquor distributor company, formed in 1958, bought the trademark.
The Billings brewers have used the name Yellowstone Valley since 1997 and received a supplemental trademark registration in September 2002. The brewery was given 40 days to respond to the complaint, which was too short a deadline. So Moncure got a 30-day extension to the end of May.
David Sherman Corp. executives were unavailable for comment.
On its Website, the Trademark Trial and Appeals Board invites parties to negotiate solutions, saying 95 percent of complaints are settled prior to trial.
That makes Moncure wonder why YVB was singled out. Other products could be targeted as well, he said, including Yellowstone Beer of West Yellowstone, a Montana beer that is starting production again.
"You know what these guys want? They want a settlement. What else could they get out of it?" he asked.
Moncure said he proposed a solution that David Sherman continues to sell Yellowstone Bourbon and YVB continues selling its Montana beer. He hasn’t heard back.
Meanwhile, in the live-and-let-live attitude in Montana, Moncure said he has no issues with Yellowstone Beer, a trademark registered in Montana in 1989, even though that name is a lot closer to his company’s name than Yellowstone Bourbon.
Yellowstone Beer hasn’t been made in Montana since Kessler Brewery went bankrupt, but owner Victor Cavalier of West Yellowstone is starting it up again.
He asked YVB to brew his product, but the Billings brewery was too busy. So Cavalier turned to Sleeping Giant Brewing Co. in Helena.
More legal logic
Under U.S. law, geographical names or surnames generally cannot be trademarked.
Yet Claude Montana tried it.
Calvin Klein certainly has slapped his name on his jeans.
Bozeman attorney Richard Conover, who specializes in intellectual property law, said there is a back door approach that can work.
Someone like Calvin Klein can register his surname on a secondary list, one that carries less clout than a primary trademark. If the company uses the name for five years or more and can prove it has developed a separate product identity with buyers, the trademark can be upgraded to the primary list.
Conover said it appears that YVB has some advantages in this dispute.
David Sherman has registered its bourbon in a different class than YVB’s beer, which means they are trademarked as different products.
Then there’s the key legal advantage.
"David Sherman Corporation has the burden of proof to show a likelihood of confusion in the marketplace about the source of the products," he said.
Companies cannot just sit on their rights if they want to protect their trademarks, he said, so that may be why the St. Louis company is acting.
Still Conover said the final decision for companies like Yellowstone Valley Brewing is as much a business decision as a legal one.
"I always ask my clients, is this mark extremely valuable to him? If he didn’t have it, would sales fall?" Conover said. "If he just wants to keep the name, I’m not sure it’s worth it."
To bow or battle?
Longtime Billings businessman Jack Lambrecht used to call his 520 Hansen Lane restaurant the "Gold Nugget Casino." He dutifully registered the name with the state of Montana.
However, when gambling tycoon Steve Wynn of Mirage Resorts decided to lock up the trademark of his Golden Nugget hotels nationally, he went after the Ma and Pa businesses in many states that were using similar names.
To avoid a lawsuit, Lambrecht and his partners agreed to change the names, the signs and advertising of four Montana casinos. They even let Wynn’s attorneys pick the new names.
"We submitted five names out of 20 to them and they picked our name for us," Lambrecht said. So his Heights casino changed names to the Montana Nugget Casino.
However, in the far northwestern corner of the state, Vi Holt and her late husband, John Holt, fought back.
The feisty owners of The Golden Nugget Saloon & Grill on Yaak River Road in Troy stood up to Wynn. It was their Missoula attorney against Wynn’s seven barristers.
The bar was named after the nearby mine, which ran for a century.
"We told them that we weren’t going to change the name because it wasn’t our right to. It was a part of history," she said.
Holt said she can’t recall the legal bill, but she remembers that her attorney charged $125 an hour for several months. She also remembered that after winning he refused to collect his fees from Wynn.
Still, Vi Holt said she’s proud of resisting, including asking for a trial in Missoula.
"They kept trying to rule us up here by their rules down there," she said. "They didn’t even know where the Yaak Valley was."
Moncure said he and Shearer have spent a year planning to launch a new beer, Old Bone Ale. Now they are wondering about taking the risk of printing Yellowstone Valley on their labels.
Standing in front of 1,000 bottles of beer from around the world on a huge wall display in the bar, Moncure answered his own question.
"Heck, yes we do!"
The next trial
According to its Website, David Sherman’s business strategy is to "become the national marketer of regional brands."
Trademarking names like Rebel Yell and Yellowstone fit that model.
Hoping to fight the challenge cheaply, Moncure is enlisting friends and neighbors – and using Internet queries – to gather tips and information so he can defend his company.
"YVB is not prepared to muster the legal oomph to fight this, but we will step up to the plate if we have to," he initially wrote.
He has talked to a couple local attorneys and wasn’t encouraged. One hinted his case wasn’t big enough and he should keep looking for a lawyer.
Another mentioned a $5,000 to $10,000 bill to defend the name, if the case went well.
Despite his misgivings about legal fights, Moncure is willing to act now, especially after the St. Louis company blew off his telephone calls.
"They are smart. They hire attorneys who know how to play the game," he said. "So play by the sword, die by the sword, I say."
After the Claude Montana lawsuit, he can’t believe his brewery would lose the use of its Yellowstone name.
"But, sometimes common sense screws you up in the end," Moncure sighed. "I don’t sleep at night."
Jan Falstad can be contacted at (406) 657-1306 or at [email protected].
MATR Supporters (view all)
Sorry, we couldn't find any posts. Please try a different search.