TailGate Brewing Complaint V7 · 12. Defendant Duvel Moortgat USA, LTD, is a foreign business corporation registered in Delaware and can be served with process at 850 New Burton Rd,

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IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF TENNESSEE

NASHVILLE DIVISION

TAILGATE BEER, LLC ) )

Plaintiff, ) Case No.: )

v. ) ) JURY DEMAND

BOULEVARD BREWING COMPANY; ) DUVEL MOORTGAT USA, LTD, )

) )

Defendants. )

COMPLAINT

Comes Now Plaintiff TailGate Beer, LLC (hereinafter “TailGate Beer” or “Plaintiff”) and

files this Complaint for Damages and Injunctive Relief against Defendants, Boulevard Brewing

Company (hereinafter “Boulevard Brewing” or “Defendant”) and Duvel Moortgat USA, LTD

(hereinafter “Duvel” or “Defendant”) (collectively “Defendants”) and for its causes of action

against Defendants states as follows:

NATURE OF CASE

1. This is an action for willful trademark infringement and copyright infringement

brought by Plaintiff against Defendants for their unauthorized use of the TailGate Beer trademark

in its stylized word (the “TailGate Mark”), its trademark in the Original Tailgate Pickup Truck

Image (the “Pickup Mark”) (collectively the “Infringed Marks”), and its copyright in the Pickup

Mark (“Infringed Work”) in blatant disregard of the exclusive rights that are vested in trademark

and copyright owners.

Case 3:18-cv-00563 Document 1 Filed 06/19/18 Page 1 of 30 PageID #: 137

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2. A United States Trademark for the Pickup Mark was duly registered with the United

States Patent and Trademark Office on March 5, 2013 bearing Registration Number 4298625.

(Exhibit A: Trademark Registration for Infringed Mark). The registration provides for

constructive nationwide notice/validity of mark and Plaintiff’s ownership in the mark.

3. A United States Trademark for the stylized word “TailGate Beer” was duly

registered with the United States Patent and Trademark Office on January 22, 2013 bearing

Registration Number 4280254. (Exhibit B: Trademark Registration for Infringed Mark). The

registration provides for constructive nationwide notice/validity of mark and Plaintiff’s ownership

in the mark.

4. For many years prior to the filing date and alleged first use date of the Application,

TailGate has designed, developed, marketed, promoted, offered for sale, and sold a variety of beer

products in connection with the TailGate Beer name and marks that consist, include, and/or

connote the mark TailGate. Collectively, the TailGate trademarks are referred to herein as the

“Infringed Marks” or the “Infringed Images”, including the common law trademarks which have

all been used in commerce for a substantial amount of time.

5. A United States Copyright for the Infringed Work was duly registered with the

United States Copyright Office on December 12, 2010 bearing Registration Number

VA0001751100. (Exhibit C: Copyright Registration for Infringed Work).

6. Plaintiff brings this action for damages and immediate injunctive relief in the form

of an order requiring Defendants to immediately cease production, distribution, and use of any

confusingly or substantially similar imaging which copies or draws on the Pickup Mark and

Infringed Work that is currently being displayed and used on Defendants’ Boulevard Pale Ale and

on other goods (the “Infringing Pale Ale Image”). Further, Plaintiff seeks an Order that Defendants


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immediately cease production, distribution, and use of any confusingly or substantially similar

imaging or wording which copies or draws on the TailGate Mark that is currently being used in

Defendants’ “Palegate” campaign (the “Infringing Advertisement”)(collectively, the “Infringing

Images”). Plaintiff requests an Order requiring Defendants to cease use, distribution, and selling

of any goods or services featuring the Infringing Pale Ale Image, the Infringing Advertisement, or

any other similar pickup truck tailgate images in advertising and marketing campaigns, online, on

its Pale Ale Beers or other beers, or in association with any other goods, or in connection with the

“Palegate” advertising campaign, promotion, or contest, or any other similar advertisements or

marketing.

7. The Infringed Marks and Infringed Work used by TailGate Beer are at the very

heart of Plaintiff’s company identity and imaging. The Infringed Marks have been used to evoke

an image of laid-back lifestyle branding and to assure consumers that the beer, food, goods, and

services they are receiving from Plaintiff are of impeccable quality. The Infringed Marks are

detailed and clearly identifiable marks that are known by customers and beer lovers throughout

the country.

8. Despite the fact that Plaintiff has used the Infringed Marks since 2007 to identify,

market, and promote its beers and other goods and services, Defendants have recently chosen to

rebrand the original imaging of their Pale Ale Beer that had been used for many years and replaced

it with the Infringing Pale Ale Image, which is a nearly identical image of the Pickup Mark and

Infringed Work, and is a blatant attempt to falsely associate with Plaintiff’s trademarked and

copyrighted image and branding. The Infringing Pale Ale Image is likely to cause consumer

confusion and lead consumers to believe that Plaintiff’s and Defendants’ products are affiliated in

some way. The Infringing Pale Ale Image now used by Defendants is substantially similar to the


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Infringed Image in such a way that the intended audience would conclude that the Infringing Image

misappropriates protectable expression of the Plaintiff. The Infringing Pale Ale Image is used not

only on the Defendants’ Pale Ale Beer and other goods, but also on apparel and other accessories

sold in Defendants’ online store, on social media, websites, along with substantial and visible

advertising/marketing campaigns and other promotions. Likewise, the Infringing Advertisement

is likely to cause consumer confusion due to the direct attempts by Defendants to associate with

Plaintiff’s TailGate Mark.

9. Plaintiff brings this trademark infringement and copyright infringement action to

immediately halt Defendants’ unauthorized and damaging use of the Infringed Marks and

Infringed Work on its beer, clothing, products, or advertising/marketing campaigns. Plaintiff seeks

a preliminary injunction, as well as permanent injunctive relief, damages, costs, and attorney’s

fees.

THE PARTIES

10. Plaintiff TailGate Beer, LLC is a Nevada Limited Liability Company registered to

do business in Tennessee with a principal place of business located at 7300 Charlotte Pike,

Nashville, Tennessee 37209.

11. Defendant Boulevard Brewing Company is a Delaware Corporation registered to

do business in Missouri and can be served with process at 2501 Southwest Boulevard, Kansas

City, Missouri 64108. Boulevard Brewing is authorized to do business in the state of Tennessee

and to distribute its beers and conduct business in Tennessee.

12. Defendant Duvel Moortgat USA, LTD, is a foreign business corporation registered

in Delaware and can be served with process at 850 New Burton Rd, Suite 201, Dover, DE 19904.


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Duvel is the corporate parent of Boulevard Brewing and does business through Boulevard

Brewing.

JURISDICTION AND VENUE

13. The jurisdiction of this Court with respect to the trademark infringement claim is

based upon 28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121 in that the controversy arises

under the Lanham Act (15 U.S.C. § 1051 et seq.), which is within the exclusive jurisdiction of

federal courts pursuant to 28 U.S.C. § 1331.

14. The jurisdiction of this Court with respect to the copyright infringement claim is

based upon 28 U.S.C. §§ 1331 and 1338(a) in that the controversy arises under the Copyright Act

and Copyright Revision Act of 1976 (17 U.S.C. § 101 et seq.), which is within the exclusive

jurisdiction of federal courts pursuant to 28 U.S.C. § 1331.

15. This Court has personal jurisdiction over Defendants because Defendants have

continuous and systematic contacts within the Middle District of Tennessee such that they can be

found to be essentially at home within this Judicial District. Defendants line of beers is widely

distributed throughout this Judicial District and Defendants advertise their beers in this Judicial

District. Defendants have an exclusive distribution agreement with Tennessee wholesaler to

distribute their beers. Defendants have at least one employee working in the Tennessee market.

16. Additionally, Defendants’ online store reaches users located in Tennessee.

Defendants have reached numerous users in Tennessee, and merchandise bearing the Infringing

Images is widely available to residents throughout Tennessee. There is a substantial likelihood of

confusion that will be felt by Plaintiff in Tennessee if Defendants continue to be allowed to infringe

on Plaintiff’s trademarked and copyrighted image and brand. As a result, there is significant harm

caused to Plaintiff by Defendants’ actions and the brunt of harm to Plaintiff is felt in Tennessee


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where Plaintiff distributes its products and markets its beers and other goods by using the

Infringing Pale Ale Image, which directly harms Plaintiff’s brand here in Tennessee. Similarly,

the Infringing Advertisement causes harm to Plaintiff due to the confusion created in Tennessee.

17. Defendants have purposefully availed themselves of the privilege of conducting

business in Tennessee. Defendants offer, market, and promote their products through a website

and other means to consumers located in Tennessee.

18. Plaintiff is registered to do business in Tennessee and has a principal place of

business in Tennessee. The Middle District of Tennessee has a considerable interest in

adjudicating disputes wherein Tennessee residents are the target of the harm resulting from the

trademark infringement and copyright infringement.

19. Defendants have been put on notice by Plaintiff of the illegal infringement but have

nonetheless continued to infringe Plaintiff’s trademarks and copyright. Through prior

communications with Plaintiff, Defendants were well aware that Plaintiff is located in Tennessee.

20. Venue is proper in the Middle District of Tennessee pursuant to 28 U.S.C. §1391

because a substantial part of the events giving rise to Plaintiff’s claims occurred in Tennessee and

Defendants’ conduct giving rise to the claims set forth herein occurred in Tennessee, further

making Defendants subject to this Court’s personal jurisdiction, as set forth above.

FACTUAL BACKGROUND

Background of TailGate Beer

21. TailGate Beer is one of the largest beer producers in the State of Tennessee.

TailGate operates as a brewery that specializes in small batch, seasonally appropriate craft beer

and was founded by Wesley Keegan in San Diego, California in 2007.


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22. As with most businesses, the TailGate Beer brand is built on recognition of the

goods and/or services offered by TailGate Beer by association with a particular name and/or image.

TailGate has built its brand through association with a logo featuring the image of a truck with its

tailgate lowered and a beer keg or other image sitting on the bed of the truck. This image forms

the bedrock of the TailGate Beer brand and is recognized throughout the consumer market for the

goodwill and quality that is synonymous with the TailGate Beer’s beers and other goods and

services. The logo and image is important to reflect the lifestyle branding of TailGate to consumers

that enjoy the beers throughout the State of Tennessee. The logo and image is distinctive and

clearly designed to associate the act of tailgating in a social setting with drinking quality beer with

friends and family.

23. TailGate operates two taprooms in the Nashville area with a third scheduled to open

very soon. Nashville has become one of the foremost tourist destinations in the entire country.

TailGate often services customers visiting the taprooms from all over the country. The taprooms

also serve food and sell TailGate’s products, all of which revolve around the identity of the

Infringed Image. The image of the pickup truck and tailgate is used on the company’s beers, taps,

growlers, glasses, t-shirts, hats, storefront along with appearing on many other goods, promotions,

marketing, and advertising related to TailGate.

24. In 2010, to safeguard the image on which TailGate Beer had built its brand and to

further solidify the lifestyle imaging it wanted consumers to associate it with, TailGate Beer filed

an application for copyright protection of its logo. The United States Copyright Office registered

the logo on December 12, 2010 with registration number VA0001751100.

25. In 2010, to further protect the imaging and foundation of its brand, TailGate Beer

filed a trademark application for a stylized mark comprised of its copyrighted logo. The imaging


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was carefully designed to show a distinctive pickup truck parked in a particular posture wherein

the tailgate of the pickup truck is open. When used to market specific beers, the tailgate often is

pictured with another image of a particular object sitting on the tailgate. The mark was designed

to be distinctive and to clearly associate the act of tailgating in a social setting with drinking quality

beer with friends and family.

26. The United States Patent and Trademark Office issued a registration certificate for

the mark on March 5, 2013 bearing registration number 4298625. The description of the mark on

the registration certificate provides that inside the border of the mark “are a beer keg, cooler, grill,

and beer resting on the tailgate and bed of a truck with the letters “T”, “G”, and “B” written

vertically on each of the tail lights . . . .” The mark is registered in three international classes: (1)

class 21 for beer mugs, pint glasses, insulating sleeve holder for bottles, insulating sleeve holders

for beverage cans, and plastic cups; (2) class 25 for clothing, namely pants, jackets, hats and caps,

beanies, and sweatshirts; and (3) class 32 for beer, ale, lager, stout, porter, and shandy. For

international class 21, the mark’s first use in commerce was May 2007. For international classes

25 and 32, the mark’s first use in commerce was September 2007. The trademarked image is

below.


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27. On December 2, 2010, TailGate also registered the trademark “TailGate Beer” with

a distinctive font and branding. The application was filed on December 2, 2010 (Application No.

85/189754). The United States Patent and Trademark Office issued a registration certificate for

the mark on January 22, 2013 bearing registration number 4280254. The mark is registered in

three international classes: (1) class 21 for beer mugs, pint glasses, insulating sleeve holder for

bottles, insulating sleeve holders for beverage cans, plastic cups, pint glasses; (2) class 25 for

clothing, namely pants, jackets, hats and caps, beanies, and sweatshirts; and (3) class 32 for beer,

ale, lager, stout, porter, and shandy. Below is an image of the logo. For international classes 21

and 25, the mark’s first use in commerce was May 2007. For international class 32, the mark’s

first use in commerce was September 2007. The trademarked image is below.


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28. In addition, for many years prior to the filing date and alleged first use date of the

Application, Tailgate has designed, developed, marketed, promoted, offered for sale, and sold a

variety of beer products in connection with the TailGate Beer name and marks that consist, include,

and/or connote the mark Tailgate throughout the United States, including, but not limited to, the

following marks:

29. Tailgate has continuously used the Infringed Marks to identify its goods in each of

the International Classes identified on the trademark registration.

30. Following its success in California, TailGate Beer moved its operations to

Nashville, Tennessee in 2014. Since it moved to Nashville, Tennessee, TailGate Beer has

expanded its operations growing from a three barrel production system to a fifty barrel system.

TailGate Beer has its headquarters in Nashville, Tennessee, which houses its brewery and also has

a taproom. In 2016, TailGate opened a second taproom in Nashville, Tennessee. At each of its

locations, TailGate Beer offers approximately 30 of its own, house-brewed beers on tap.

31. TailGate Beer is continuing to grow its brand through expanded distribution and

new products. These efforts include expanding its operations into additional geographic areas.


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32. TailGate Beer has a reputation for bringing innovative and experimental beers to

its customers. TailGate Beer maintains this reputation by releasing two new beers for its taprooms

every week.

33. As a result of its careful imaging, innovation, marketing efforts, and quality goods

and services, the TailGate Beer brand is instantly recognizable by the Infringed Marks that form

the foundation of its brand. The iconic truck with its tailgate lowered and distinctive TailGate beer

lettering are present throughout Tailgate Beer’s taprooms and on its glassware, beers, and taps,

including the following:

34. TailGate Beer’s website also features an online store. Customers can purchase

apparel, glassware, and other items featuring the Infringed Marks and Infringed Work on which

the foundation of the TailGate Beer brand is based. The brand revolves around the image of the

iconic truck with its tailgate lowered. The Infringed Marks and Infringed Image are instantly

recognizable and forms TailGate Beer’s identity in the craft beer industry. An example of some


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of the items featuring the Infringed Image are available on TailGate Beer’s website for sale such

as:

35. Since at least 2007, TailGate Beer has continuously used the image of the truck

with its tailgate lowered to promote its brand and beer quality and set itself apart in the beer

industry. TailGate Beer’s iconic image has remained a constant identifier of TailGate Beer’s

distinct brand and reputation in the craft beer industry.

36. From TailGate Beer’s first beers to its website, taproom locations, and expanding

market, the image of the truck with its tailgate lowered has allowed it to sustain its identity in the

growing craft beer market.

37. Based on TailGate Beer’s expanding operations, TailGate Beer has become a

distinct and recognized brand with the image of the truck with its tailgate lowered as a centerpiece

of the brand.

38. Over the years, TailGate Beer has consistently and successfully protected its

trademarks and copyright. TailGate Beer has built up the brand to the point where other brewers

have recognized that TailGate Beer is the definitive owner of the TailGate imaging and branding

as it relates to beer.

Background of Boulevard Brewing and its Use of the Infringing Images

39. Boulevard Brewing was founded in 1989. It is the largest specialty brewer in the

Midwest. In 2014, Duvel acquired Boulevard Brewing.


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40. Defendants sell their beer in 40 states, including Tennessee and sell the Boulevard

Brewing beer in close proximity to TailGate Beer’s locations in Nashville, Tennessee and

surrounding areas.

41. Within 10 miles of TailGate Beer’s headquarters, Defendants’ beer is sold at 47

locations. Within 25 miles of TailGate Beer’s headquarters, Defendants’ beer is sold at 94

locations. Within 50 miles of TailGate Beer’s headquarters, Defendants’ beer is sold at 200

locations. Likewise, within 10 miles of TailGate Beer’s Music Row location, Defendants’ beer is

sold at 74 locations. Within 25 miles of TailGate Beer’s Music Row location, Defendants’ beer is

sold at 96 locations. Within 50 miles of TailGate Beer’s Music Row location, Defendants’ beer is

sold at 200 locations.

42. In short, Defendants have a strong presence in the Nashville, Tennessee area. This

presence in the area has placed it into direct competition with TailGate Beer.

43. After Defendant Boulevard Brewing was founded, the first beer that it produced

was its pale ale. Boulevard Brewing’s Pale Ale is a staple of its brand and is available year-round,

unlike many of its other beers.

44. The Pale Ale is labeled by Defendants as “Our Original.” Defendants state that the

“Pale Ale is the first beer we brewed, and continues to be a perennial favorite.”

45. Until recently, Defendants sold their Pale Ale using the following label:


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46. Upon information and belief, within the last two years, Defendants re-branded the

Boulevard Brewing Pale Ale by changing the image representing the beer. The image representing

the Pale Ale now features a truck parked in the exact same manner as the Pickup Mark with its

tailgate lowered and a keg in the bed of the truck. Specifically, Defendants now utilize the

following image to sell their Pale Ale:

47. Defendants are also using the Infringing Pale Ale Image on apparel and other

merchandise, including hats and t-shirts, posters, magnets, and glassware for sale on Boulevard

Brewing’s website http://store.boulevard.com/search/pale/. The following items are being sold on

Boulevard Brewing’s website:


http://store.boulevard.com/search/pale/

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48. Defendants have taken the infringement even further by advertising the Pale Ale

with a specific “Palegate” advertising campaign. Defendants are promoting an “Ultimate

Palegate” program. The advertising campaign even seems to target TailGate by stating “Why just

tailgate when you could Palegate?” The Palegate program is a specific contest that is a further

attempt by Defendants to confuse consumers. This image has been promoted on Boulevard

Brewing’s Instagram page and on a specific contest website as follows:


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49. In addition to using word play to draw associations between the TailGate Mark and

Defendants’ business, Defendants’ stylized word “Palegate” is likely to cause confusion among

consumers. The style of the word “Palegate” is substantially similar to TailGate’s registered

stylized word mark.

The distinctive font, lettering, and style in the word “Palegate” is nearly identical in look and feel

to the TailGate Mark including the distinctive font and branding. This use is likely to evoke

confusion among consumers, as consumers are likely to associate the “Palegate” advertising

campaign with Plaintiff’s brand.

50. The confusion that the “Palegate” advertising campaign will cause is increased by

the fact that the campaign not only uses the word “Palegate” in the nearly identical style, but it

also uses the Infringing Pale Ale Image in the same advertisement.

51. Boulevard Brewing will likely continue to use the Infringing Images on additional

items if it is not immediately stopped.


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52. The similarity between the image TailGate Beer has used to define its brand and

the image Boulevard Brewing now uses on its Pale Ale is undeniable.

53. Boulevard Brewing’s new design overtly copies and infringes TailGate Beer’s

trademarks and copyright. Further, Boulevard Brewing has attempted to claim the image as its

own by stating the image as “Our Original”.

Trademark Infringement: Likelihood of Confusion

54. Defendants’ use of the Infringing Pale Ale Image and Infringing Advertisement

has caused and is likely to continue to cause confusion among consumers.

55. The Infringed Marks and Infringed Work are strong marks that stand out as a

symbol of TailGate Beer’s brand.

56. Defendants and TailGate Beer both sell craft beer, and Defendants use the

Infringing Pale Ale Image and Infringing Advertisement to market and sell items related to those

sold by TailGate Beer. A side by side comparison of the images shows how egregious the

infringement is:


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Pickup Mark Defendants’ Infringing Image

57. The strong similarity between the Infringed Image and the Infringing Pale Ale

Image is likely to lead relevant consumers to believe that Plaintiff’s products and Defendants’

products are affiliated in some way.

58. TailGate Beer is actively expanding its market and product line into additional

geographical markets, and Defendants’ use of the Infringing Images is likely to cause further

consumer confusion.

59. Furthermore, Defendants’ use of the Infringing Pale Ale Image is deceiving to

consumers. The Defendants’ new design leads to confusion by using the words “our original”

under the image of the truck with the tailgate lowered. This is likely to lead consumers to believe

that the use of the Infringing Images is original to Defendants’ brand and to question whether

TailGate Beer is infringing on the logo of another brewery. Furthermore, there has been actual

consumer confusion based upon Defendants’ use of the Infringing Pale Ale Image.

60. Packing and labels are critical to beer marketing to ensure that brands stand out.

By using the Infringing Pale Ale Image to sell its beer, Defendants’ are causing confusion among

consumers and diluting TailGate Beer’s ability to stand out in the craft beer market.

61. Additionally, there is a strong similarity between Defendants’ stylized word

“Palegate” in its advertising campaign and Plaintiff’s registered stylized word mark.

62. The stylized word mark registered to Plaintiff is strong and stands out in the craft

beer industry. The style evokes instant association with Plaintiff’s brand.

63. As used in Defendants’ “Palegate” advertising campaign, the use of the stylized

word is likely to cause consumer confusion and lead consumers to believe that Plaintiff is somehow


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affiliated with the campaign. Further confusion will be caused by Defendants’ use of the Infringing

Pale Ale Image in the same advertisement.

64. The use of the “Palegate” imaging further shows willful infringement as Defendants

only started using the campaign after being put on notice by Plaintiff regarding infringement. In

fact, Plaintiff had oral communications with Defendants regarding the infringement in April of

2018. Plaintiff then sent further notice of infringement in a letter on May 4, 2018. On this same

date, Defendants used the Palegate campaign on their Instagram page.

Copyright Infringement

65. Defendants had access to TailGate Beer’s mark prior to using the Infringing

Images. The TailGate Beer mark is available publicly on its beer, website, and other products for

sale. The mark is and has been widely available to the consuming public throughout the United

States. Defendants clearly had access to and the opportunity to view the mark before the release

of the re-branded Pale Ale featuring the Infringing Pale Ale Image.

66. The Infringing Pale Ale Image is substantially similar to the Pickup Mark and the

Infringed Work. The qualitatively important features of the TailGate Beer mark are copied in the

Infringing Pale Ale Image.

67. The Pickup Mark, Infringed Work, and the Infringing Pale Ale Image feature a

forward-facing truck angled to the right.

68. In all three images, the tailgate of the truck is lowered. Additionally, there is a beer

keg in the back of the truck in both the Pickup Mark, Infringed Work, and the Infringing Pale Ale

Image. Plaintiff’s expression of the details and creativity in the Infringed Image are directly copied

in the Infringing Pale Ale Image.


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69. The Infringing Pale Ale Image is substantially similar to the Pickup Mark, and the

Infringed Work because, the images, taken as a whole, are substantially similar in look in feel.

70. The works are so similar that an ordinary reasonable person would conclude that

Boulevard Brewing misappropriated TailGate Beer’s protectable expression.

Discovery of the Infringing Images and Harm to Plaintiff

71. TailGate Beer became aware of the use of the Infringing Pale Ale Image by

Boulevard Brewing when a customer who had encountered the image brought it to TailGate Beer’s

attention. The customer inquiry demonstrated that the Infringing Pale Ale Image appeared

substantially similar to the TailGate’s intended audience. Additionally, it showed that Defendants’

use of the Infringing Pale Ale Image was causing consumer confusion.

72. After learning about Defendants’ use of the Infringing Pale Ale Image, TailGate

Beer contacted Defendants in an attempt to convince Defendants to immediately cease using the

Infringing Pale Ale Image.

73. Rather than comply with Plaintiff’s demand to cease use of the Infringing Pale Ale

Image, on March 12, 2018, Defendants filed an action to cancel TailGate’s trademark. Defendants

also filed to trademark their Infringing Pale Ale Image.

74. Defendants sought a license from TailGate Beer to use the protected elements of

the Pickup Mark and Infringed Work.

75. Defendants continue to use the Infringing Pale Ale Image and the Infringing

Advertisement on their beer and other items available for sale in the Boulevard Brewing online

store. In fact, Defendants did not start advertising the Palegate campaign until after Plaintiff

engaged in oral communications with Boulevard regarding their infringement.


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76. Defendants are aware of TailGate Beer’s brand and heritage in the craft beer market

and are further aware of the infringement due to the notice expressly given by Plaintiff.

77. In using the iconic truck with the tailgate lowered to represent its beer, it is clear

that Defendants seek to mislead consumers about the source of Boulevard Beer and in doing so,

free ride off of Plaintiff’s goodwill that has been developed for over a decade.

78. Defendants’ deliberate infringement of the TailGate Beer mark is likely to succeed

in causing confusion to consumers. The two companies compete in the craft beer market, and

anyone who has seen the beer or visited Boulevard Brewing’s website will be misled about the

source of the beer by seeing the Infringing Image representing its beer.

79. TailGate Beer has developed its brand with the iconic image of the truck with its

tailgate lowered for years. Now, Defendants are willfully infringing the TailGate Beer trademarks

and copyright and profiting from the infringement to say nothing of attempting to dilute the marks

beyond repair.

80. Defendants’ use of the mark on its own beer has indeed caused consumer confusion

and is likely to cause continued confusion to consumers.

81. This consumer confusion can have a significant effect on TailGate Beer by

undermining its reputation for innovative, quality beer.

82. By copying TailGate Beer’s protected trademarks and copyright, Defendants aim

to capitalize on TailGate Beer’s reputation and innovation.

83. If Defendants are allowed to continue distributing its Pale Ale or using the

Infringing Pale Ale Image on any other beer or product and if it is allowed to continue promoting

its Infringing Advertisement, TailGate will suffer irreparable injury, including loss of reputation


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and goodwill. I believe there will be continuing confusion between the brands and Tailgate will

suffer the loss of business, consumer confidence.

CAUSES OF ACTION

COUNT I: FEDERAL TRADEMARK INFRINGEMENT

84. TailGate Beer repeats and re-alleges each of the foregoing paragraphs, as though

fully set forth herein.

85. TailGate Beer owns all right, title, and interest in the registered trademarks of the

Pickup Mark and TailGate Mark, which it has continuously used in commerce since 2007.

86. Defendants have made use of substantially and confusingly similar images in

commerce without TailGate Beer’s consent.

87. Defendants’ use of such substantially and confusingly similar images is likely to

deceive and cause confusion in the minds of consumers.

88. This is a clear case of trademark infringement and there is strong “likelihood of

confusion,” based upon the following:

a. TailGate Beer’s marks are strong and instantly recognizable.

b. Defendants are using substantially and confusingly similar images on goods related

to those sold by TailGate Beer.

c. The marks are similar in that they both feature a specific model of truck in the same

position with its tailgate lowered and a beer keg in the bed of the truck.

d. There is evidence of actual confusion because Defendants’ use of substantially and

confusingly similar images was brought to TailGate Beer’s attention by a customer

who was confused about the source of the good.


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e. TailGate Beer and Defendants use the same marketing channels in their use of an

online store and use of social media.

f. The facts demonstrate that Defendants’ intent in selecting the marks was to

capitalize on the iconic images that have set the TailGate Beer brand apart in the

industry.

g. TailGate Beer has plans to expand its business and its product line to reach

additional consumers and markets.

89. Defendants’ use of their substantially and confusingly similar images in commerce

infringes TailGate Beer’s rights in its trademarks and violates 15 U.S.C. § 1114. Defendants’

unauthorized use of such substantially and confusingly similar images creates an erroneous

impression in the minds of consumers that Defendants’ product is affiliated with TailGate Beer.

90. Unless Defendants are enjoined and restrained from continuing its infringement,

Defendants will continue to confuse consumers and TailGate Beer will continue to be injured by

the ongoing infringement. TailGate Beer is entitled to a preliminary and permanent injunction,

provided for in 15 U.S.C. § 1116, to prevent further violation of its rights in the registered marks.

91. Pursuant to 15 U.S.C. § 1117, Tailgate Beer is entitled to recover Defendants’

profits and the actual damages it has sustained, as will be proven at trial. TailGate Beer is also

entitled to recover costs of this action.

92. Because Defendants’ misconduct is intentional and willful, TailGate Beer should

be awarded three times its actual damages.

93. Because Boulevard Brewing’s misconduct is intentional and willful, this is an

exceptional case, and TailGate Beer is entitled to an award of attorney’s fees under 15 U.S.C. §

1117.


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COUNT III

COMMON LAW TRADEMARK INFRINGEMENT



95. TailGate Beer owns all right, title, and interest in the common law trademarks

which have been continuously used in commerce since 2007.

96. Defendants have made use of substantially and confusingly similar images in

commerce without TailGate Beer’s consent.

97. Defendants’ use of such substantially and confusingly similar images is likely to

deceive and cause confusion in the minds of consumers.

98. This is a clear case of trademark infringement and there is strong “likelihood of

confusion,” based upon the following:

a. TailGate Beer’s marks are strong and instantly recognizable.

b. Defendants are using substantially and confusingly similar images on goods related

to those sold by TailGate Beer.

c. The marks are similar in that they both feature a specific model of truck in the same

position with its tailgate lowered.

d. There is evidence of actual confusion because Defendants’ use of substantially and

confusingly similar images was brought to TailGate Beer’s attention by a customer

who was confused about the source of the good.

e. TailGate Beer and Defendants use the same marketing channels in their use of an

online store and use of social media.


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f. The facts demonstrate that Defendants’ intent in selecting the marks was to

capitalize on the iconic images that have set the TailGate Beer brand apart in the

industry.

g. TailGate Beer has plans to expand its business and its product line to reach

additional consumers and markets.

99. Defendants’ use of their substantially and confusingly similar images in commerce

infringes TailGate Beer’s common law trademark rights. Defendants’ unauthorized use of such

substantially and confusingly similar images creates an erroneous impression in the minds of

consumers that Defendants’ product is affiliated with TailGate Beer.

100. Unless Defendants are enjoined and restrained from continuing its infringement,

Defendants will continue to confuse consumers and TailGate Beer will continue to be injured by

the ongoing infringement. TailGate Beer is entitled to a preliminary and permanent injunction to

prevent further violation of its rights in the registered marks.



102. Tailgate Beer is entitled to recover Defendants’ profits and the actual damages it

has sustained, as will be proven at trial. TailGate Beer is also entitled to recover costs of this

action.



104. Because Boulevard Brewing’s misconduct is intentional and willful, this is an

exceptional case, and TailGate Beer is entitled to an award of attorney’s fees under 15 U.S.C. §

1117.


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COUNT III

FALSE DESIGNATION OF ORIGIN



106. TailGate owns all right, title, and interest in its registered trademark images, which

it has continuously used in commerce since at least 2007.

107. Through the conduct alleged above, Defendants’ unauthorized use in commerce of

substantially and confusingly similar images infringes Plaintiff’s rights in its marks and violates

15 U.S.C. § 1114 because it renders Defendants’ products confusingly similar to the well-known

TailGate images. Defendants’ unauthorized use of the Infringed Marks creates the wrongful

impression in consumers’ minds that Defendants’ products have been manufactured, approved,

sponsored, endorsed, or guaranteed by, or are in some way affiliated with Plaintiff. Defendants

have knowingly and willfully attempted to further the confusion by claiming the image as “Our

Original”. Such use constitutes a false designation of origin within the meaning of 15 U.S.C. §

1125(a).

108. Upon information and belief, Defendants chose to use substantially and confusingly

similar images on its products with the intent to cause confusion among consumers and to deceive

them into believing that Defendants’ products are made by, endorsed by, or otherwise associated

with Plaintiff.

109. Upon information and belief, Defendants have profited from their unfair

competition and Plaintiff has suffered damages due to Defendants’ unfair competition and false

designation of origin.


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110. Defendants’ intentional and willful misconduct is causing irreparable harm by

confusing consumers and enabling Defendants to unlawfully profit by trading off of Plaintiff’s

goodwill. Such conduct is intentional and requires the order of preliminary and permanent

injunctive relief, treble damages, and attorneys’ fees.

COUNT IV

COPYRIGHT INFRINGMENT



112. TailGate Beer has exclusive rights in the registered copyright of its logo under 17

U.S.C. § 106, which it has continually used in commerce since 2007. TailGate Beer has the

exclusive right to display the copyrighted work publicly.

113. Defendants have engaged in the unauthorized use of the work publicly.

114. Defendants have violated TailGate Beer’s exclusive reproduction and distribution

rights in the copyright as well TailGate Beer’s right to public display of the copyright.

115. The infringement of TailGate Beer’s copyright is in violation of 17 U.S.C. § 106,

et seq. and 501.

116. Defendants have violated the exclusive rights enumerated under 17 U.S.C. § 106

of the United States Copyright Act by its activities as discussed above.

117. Defendants’ conduct has at all times been knowing, willful, and with complete

disregard to TailGate Beer’s rights.

118. The infringement by Defendants has been, and continues to be, willful and

knowing.


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119. Pursuant to 17 U.S.C. § 504(b), TailGate Beer is entitled to actual damages,

including the profits of Defendants, as will be proven at trial.

120. In the alternative, pursuant to 17 U.S.C. § 504(c), TailGate Beer is entitled to

receive the maximum amount of statutory damages for each act of willful copyright infringement,

$150,000.00.

121. Pursuant to 17 U.S.C. § 505, TailGate Beer is entitled to recover full costs of this

action and reasonable attorney’s fees.

122. To prevent ongoing harm and protect its exclusive rights, TailGate Beer is entitled

to a preliminary and permanent injunction to prevent or restrain infringement of TailGate Beer’s

copyright by Defendants pursuant to 17 U.S.C. § 502.

COUNT V

DECLARATORY JUDGMENT



124. Defendants’ ongoing use of substantially and confusingly similar images in

connection with the sale of Boulevard Brewing beer infringes TailGate Beer’s trademarks and

copyright.

125. Defendants are engaged in activities that will result in further unauthorized use of

TailGate Beer’s marks in commerce in a way that is likely to cause further confusion among

consumers.

126. There is an actual controversy between TailGate Beer and Defendants because

Defendants seek to continue using their substantially and confusingly similar images while

TailGate Beer alleges that this use infringes its rights in the registered trademarks and copyright.


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127. Plaintiff seek a declaratory judgment under 28 U.S.C. § 2201 that Defendants’ use

of the Infringing Images in commerce infringes TailGate Beer’s rights in its trademarks and

copyright and that further use of the marks in connection with selling its products would infringe

TailGate Beer’s rights.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Prays for judgment against Defendants and for the following relief:

A. A declaration that Defendants have willfully infringed the TailGate Beer trademarks in

violation of the Lanham Act;

B. A declaration that Defendants are directly liable for trademark infringement;

C. An award of damages pursuant to 15 U.S.C. § 1117 in the amount of Defendants’ profits

from the unauthorized use of Plaintiff’s trademarks;

D. An award of three times Plaintiff’s actual damages pursuant to 15 U.S.C. § 1117;

E. An award of the costs of this action pursuant to 15 U.S.C. § 1117;

F. A finding that this is an “exceptional case” and an award of attorney’s fees pursuant to 15

U.S.C. § 1117;

G. A preliminary and permanent injunction under 15 U.S.C. § 1116 to prevent further

violation of Plaintiff’s rights in the registered trademarks;

H. A declaration that Defendants have willfully infringed TailGate Beer’s copyright in

violation of the Copyright Act;

I. A declaration that Defendants are directly liable for copyright infringement;

J. An award of damages pursuant to 17 U.S.C. § 504(b), including actual damages, inclusive

of the injury to the market value of the copyright in the infringed work, and the profits of

Defendants as will be proven at trial, or, in the alternative, the maximum amount of


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statutory damages pursuant to 17 U.S.C. § 504(c), $150,000.00 for each act of willful

infringement;

K. An award of attorney’s fees and full costs pursuant to 17 U.S.C. § 505 and under other

applicable law;

L. A preliminary and permanent injunction under 17 U.S.C. § 502 to prevent further violation

of Plaintiff’s rights in the registered copyright;

M. For pre-judgment and post-judgment interest according to law, as applicable;

N. For such other and further relief as this Court may deem just and proper.

DEMAND FOR JURY TRIAL

Pursuant to Federal Rule of Civil Procedure 38(b), and otherwise, Plaintiff respectfully

demands a trial by jury.

Dated: June 19, 2018

By: s/ Richard S. Busch Richard S. Busch (TN Bar # 14594) Joshua D. Wilson (TN Bar # 031486) KING & BALLOW 315 Union Street, Suite 1100 Nashville, TN 37201 Telephone: (615) 726-5422 Facsimile: (615) 726-5417 [email protected] [email protected]


mailto:[email protected]

mailto:[email protected]

Documents

TailGate Brewing Complaint V7 · 12. Defendant Duvel Moortgat USA, LTD, is a foreign business corporation registered in Delaware and can be served with process at 850 New Burton Rd,