Patrick Scott O'Bryant is a Associate in Holland & Knight's Tallahassee office.
In Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Co., 897 F. 3d 413 (2d Cir. 2018), the court of appeals vacated in part and reversed in part a district court's grant of summary judgment in favor of the plaintiff apparel company in a trademark dispute. Both parties had applied to trademark the disputed brand "Rogue," and later entered into a Settlement and Trademark Consent Agreement with one another. The defendant registered the trademark for the brand for goods sold primarily in the defendant's brewpubs and website, while the plaintiff registered the trademark for clothing, namely coats, jackets, vests, shirts and pants. The plaintiff had been selling clothing using the disputed brand on items first in 2000, but in clothing-only stores since 2009. The defendant had been using the brand on clothing since 1989, but began selling items in clothing-only stores in 2011, which was after the trademarks had been registered. The district court found that the defendant's rights to the disputed trademark were inferior, as it had not begun selling clothing with the disputed brand in clothing-only or department stores until 2011. The court of appeals reasoned that the defendant had deliberately and continuously sold clothing with the disputed brand since 1989, and although they were intended to support a trademark for beer, these sales were sufficient to establish a protectable priority in use of the mark for the sale of such goods. An owner's rights are not limited to the types of stores in which the owner has previously exploited the trademark. The fact that the defendant had not sold in department or clothing-only stores did not mean that the plaintiff, a junior user, was "free to usurp" the defendant in those stores.
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