You either die a hero, or you live long enough to see yourself become the villain. Stone Brewing, which has long built its brand on “challenging the status quo” and fighting against big beer, was outed on Friday for having issued a trademark cancellation request against Sawstone Brewing in Morehead, KY.

First reported by Kindsey Bernhard of Kentucky Sports Radio, who uncovered a series of tweets stemming from Patrick Fannin of Dreaming Creek Brewery in Richmond, KY, Fannin explains that Stone Brewing has issued a trademark cancellation request against Sawstone Brewing for their use of the word “stone” in the brewery’s name. Stone Brewing first filed for their mark of the word in 1997.

Lawyer representing Stone Brewing has sent a C&D to Sawstone Brewing in Morehead, Kentucky. Stone does not want them using the word stone in their name.

— Handsome Pat Fannin (@Patrick_Fannin) July 17, 2020

At first, they had agreed to never turn Sawstone into two words. Lawyers wanted the 3bbl brewhouse brewery that made 100bbls last year to limit their distribution range.

— Handsome Pat Fannin (@Patrick_Fannin) July 17, 2020

New lawyer for Stone wants them to drop the entire name now. Going to court would be prohibitively expensive for this less-than-one-year-old brewery.

— Handsome Pat Fannin (@Patrick_Fannin) July 17, 2020

Upon further investigation of the US Patent and Trademark Office, the Sawstone Brewing team discovered that Stone Brewing has also issued similar trademark cancellation requests in approximately 100 instances this year where entities have used the word “stone” or “bastard” in either their alcohol-related business or products. Stone Brewing is also the creator and trademark holder for Arrogant Bastard Ales.

Other breweries and brands listed include Touchstone Brewing, Stone Hollow Brewing, Stoney’s Brewing Company, Cask & Stone Brewery, as well as Blue Point Brewing’s Juicy Bastard and Reuben’s Brews Stone the Crows, a limited bourbon barrel-aged Strong Ale. However notably absent from the list were Firestone Walker, which is now part of the Duvel Moortgat group that sits as the 5th largest craft brewery in the country, as well as popular Illinois brewpub Brickstone Brewery.

Stone Brewing’s Statement

After reaching out to the Stone Brewing team for comment on the trademark cancellation requests, CEO, Dominic Engels, issued the following statement to PorchDrinking.

“Since 1996, Stone has protected its brand by registering its trademarks like STONE® and STONE BREWING® with the U.S. Patent and Trademark Office.  When other businesses try to register trademarks that are confusingly similar to Stone’s trademarks, Stone regularly opposes them at the PTO.  This is a routine part of being a trademark owner.

In this case, Sawstone applied for a nationwide trademark registration to use “SAWSTONE BREWING CO.” to sell beer.  Stone filed a petition to cancel that registration with the Patent and Trademark Office.  As Stone told the PTO, Sawstone’s mark is confusingly similar to Stone’s registered trademarks.  The PTO will eventually decide whether the mark can be registered.

There seems to be some confusion out there about whether Stone has sent “cease and desist” letters to various folks, including Sawstone. To clarify, we have not filed a lawsuit in court and a cancellation at the Patent and Trademark Office is not a “cease and desist.” A cancellation is an administrative proceeding where the PTO decides whether or not a trademark can be registered. We are already in discussions with Sawstone to see if we can reach an agreement that works for both of us.”

Taking on Big Beer

Stone Brewing is no stranger to trademark disputes, as it is currently still engaged in a claim against MillerCoors that stems back to 2018. The crux of the dispute stems from Keystone’s (a MillerCoors owned brand) use of the word “Stone”, which was laid out independently from “Key” on packaging and advertising that began circulating in 2017.

In March 2020, a federal court rejected both sides’ motions for summary judgment and the case will now move to trial in October 2020. Stone Brewing is seeking to recover $1 billion in damages in regard to infringing sales. Coincidentally, in the lawsuit, MillerCoors argues that the San Diego-based craft brewery’s trademark of the word “stone” is “conceptually weak because at least 10 other craft breweries actively use the word ‘Stone’ in their name,” which is likely the explanation for Stone’s sudden interest leaving no trademark cancellation request unturned in regards to the use of the word “stone” across the beverage industry.

However, while a major corporation like MillerCoors is able to go toe-to-toe with the 9th largest craft brewery in the country, many smaller breweries who recently received cancellation requests don’t have the resources to contend, and often face greater implications if they capitulate.

Legal Defense During a Pandemic

Nicholas Hollan, co-founder of Sawstone Brewing, explained that the Eastern Kentucky-based brewery, which is home to just a 3bbl brew system, and last year produced just 100 barrels of beer, received their cease-and-desist notification in March 2020, just as the pandemic forced them to layoff most of their workforce.

“We are mid-pandemic, and our revenue dropped by 80%, and we’re having to fund a legal defense to fight this cancellation request,” said Hollan. “We can either fight this or spend even more money to rebrand.” Hollan continued, “We’d have to come up with a new name and new logo, buy all new glassware, all new shirts, and merch, and then you have to give up all brand-building that got us in front of people. You’d basically have to start from scratch.”

As Hollan explains, the Sawstone name pays homage to the history of the building in which the brewery is located, one of only two buildings in the country built from “sawed stone” or limestone procured locally. Hollan became friends with co-founders Derek Caskey and Blake Nickell while attending grade school and middle school in Morehead. After a short stint away, they all reconnected after moving back and started the brewery together in 2019 after winning a local homebrew competition.

An Industry Built on Collaboration?

Stone Brewing’s hop forward portfolio, including the iconic Arrogant Bastard Ale, were early gateway beers for Hollan and his co-founders. But now the trio have been disheartened by their inability to reach a compromise with the craft beer pioneer.

“Before we started this brewery, we had a lot of help from the craft beer community, and the brewing industry in Kentucky, in particular, is really tight-knit and strong,” said Hollan. “That’s what we thought the whole industry was like. We assumed they were on the same level of cooperation. But you get this kind of stuff and you realize the world is not like you hoped it was.” 

The Sawstone team has cited Stone Brewing’s 2018 video, which first announced their lawsuit against MillerCoors, in which Stone founder Greg Koch stated, “You can end all this right here and now, by one simple move, that reinforces your brand that you built… Put the Key back in Keystone. That’s it. Stop using ‘stone’ as a standalone word, because when it comes as a standalone word in the world of beer, it’s ours.”

And while Sawstone has offered to pledge never to separate their compound word, they claim that their offer has fallen on deaf ears with Stone’s refusal to accept any such terms.

Legal Perspective

As to whether or not Stone’s trademark cancellation request against Sawstone would hold up with the USPTO, we spoke with the team at beerattorney.com, who noted that the decision would ultimately come down to whether or not the brewery name and the use of its name would cause consumers to be confused between the two brands, and whether the names make the same commercial impression.

The Beer Attorney team went on to explain that cancellation requests like these don’t have clearly defined parameters and vary case-by-case, but also stated that “if the mark is unified where the word ‘stone’ is intrinsically linked to the other word, typically their mark can be defined as having a different connotation and meaning”.

Meanwhile, the Sawstone Brewing team has launched a GoFundMe page which has already netted over $8,400 toward legal defense fees.

 

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