Oregon’s Naked Wines Tells Local Brewer It Can’t Sell “Naked” Beer
Naked Wines is an Oregon winery with an unfortunate series of suggestive wine names, such as Penetration Cabernet Sauvignon, Oh! Orgasmic Barbera, Cougar Semi-Sparkling White, and Bareback Sweet White. Their unfortunate marketing campaign consists of slogans like “I Get Naked Regularly” and “We Just Got Naked.” And now Naked Wines is suing Prism Brewing Company in Bucks County over Prism’s “Naked” beers.
Naked Wines filed the lawsuit in Philadelphia’s federal court on Monday, claiming that Prism’s use of the word “Naked” for its beers violates the Oregon company’s trademarks. Thankfully, Prism’s entire company is not built around selling beers with sexually suggestive names, but Prism’s roster of beers does include such products as Naked Red (a red ale), Naked Blonde, Naked Brunette and Naked Pale, and the company has used what Naked Wines calls “erotic” and “sexually-suggestive themes and imagery” to sell those beers, the same way that Naked Wines does for its products.
Way back in 2013, Naked Wines fired off a letter to Prism, asking the company about its use of “Naked.” According to the lawsuit, Prism told Naked Wines that the word was meant to indicate that the beers were “brewed without additional elements,” which is in keeping with Prism’s slogan of “Whole, unfiltered & local.” Naked Wines went to the U.S. Patent & Trademark Office to challenge Prism’s attempt to register its “Naked” trademarks, and Prism never bothered to respond to that challenge, so a default judgment was issued in Naked Wines’ favor, thereby canceling the Prism trademark application.
Then in 2014, Prism approached Naked Wines, suggesting that they reconsider the whole thing, but Naked Wines declined and told Prism to stop with the whole “Naked” thing immediately. But Prism continued to market its “Naked” beers, and according to the suit, they stopped responding to Naked Wines.
Naked Wines’ contention is that Prism’s use of the term “Naked” to push an alcoholic beverage could cause confusion in the market, i.e. a person buying a “Naked” beer might reasonably assume that it was a Naked Wines product, and vice versa. Naked Wines are not currently on shelves in Pennsylvania (you have to special order it), but you can buy the products in most states, including New Jersey. Prism’s beers are available in New Jersey and Pennsylvania.
But it turns out that Naked Wines isn’t actually the owner of the original “Naked” trademark in the alcoholic beverages industry, reports Philadelphia intellectual property attorney Alexis Arena of Center City law firm Flaster Greenberg. Arena examined documents filed with the national trademark office and explains that Naked Wines was only able to register “Naked” in association with its brand after getting consent from the original owner, Purple Wines, who has been using it since at least 2001.
“It’s a very interesting case,” says Arena. “Naked is a very commonly used term in connection with beer, wine and alcoholic beverages. Their agreement with the prior owner says they will not use ‘Naked’ alone, and now they are litigiously going after someone else using ‘Naked’ paired with another term.”
Arena adds that Naked Wines has complained to the trademark office about other companies using “Naked” and that they’ve lost each time, with the exception of Prism, because Prism didn’t fight it. “It may be that they think that the defendant won’t fight it in court either,” she says.
The lawsuit accuses Prism of trademark infringement and unfair competition and asks the court to award Naked Wines unspecified damages and to force Prism to stop using “Naked” and destroy any labels bearing the word. Prism was not immediately available for comment.
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