United States District Court, D. New Mexico
MEMORANDUM OPINION AND ORDER
owns trademarks of the phrase Route 66 and the iconic highway
shield design to make and sell beer. Defendants Route 66
Junkyard Brewery LLC (“the Brewery”) and its
owner Henry Lackey also use the phrase Route 66 and a design
logo to produce beer at a microbrewery in Grants, New Mexico.
After unsuccessful cease-and-desist efforts, Plaintiff
brought an action under the Lanham (Trademark) Act, 15 U.S.C.
§ 1114 against Defendants for infringement of their
federally registered trademarks and against the Brewery for
unfair competition under 15 U.S.C. § 1125. See
Am. Compl., ECF No. 17. The parties cross-moved for summary
judgment, arguing that they are entitled to judgment as a
matter of law on whether Defendants willfully infringed on
Plaintiff's Route 66 trademarked beer. Plaintiff
additionally sought summary judgment on Defendants'
affirmative defenses and an injunction to permanently enjoin
Defendants from using the phrase Route 66 in connection with
beer. After carefully considering the motions, briefs,
evidence, and relevant law, the Court concludes that the
parties' motions should be denied.
presenting the facts taken from the parties'
cross-motions for summary judgment, the Court will set forth
the respective parties' version of events as supported in
the record. The Court will construe the facts in the light
most favorable to the non-moving party in the analysis of
each party's respective motion for summary judgment.
Plaintiffs Trademarks and Product Advertising
Plaintiff owns United States Trademark Registration No. 4,
254, 249 for the word mark ROUTE 66, a standard character
mark without any particular font, style, size, or color, and
No. 4, 442, 767 for the following design mark:
Plaintiffs Motion for Partial Summary Judgment and Permanent
Injunction, ECF No. 47 (“Pl.'s MSJ”),
Undisputed Fact (“UF”), ¶ 1; Pl.'s Ex.
2, ECF No. 49-1. Both marks are for use with beer and had
respective registration dates of 2012 and 2013. UF ¶ 1.
Under these marks, Plaintiff manufactures and distributes an
India pale ale/lager blend brewed to Plaintiffs
specifications by Minhas Craft Brewery located in Wisconsin.
Id. ¶ 3. Plaintiff s beers are offered as draft
beer at bars in the United States and sold alongside local
specialty beers. Id. ¶¶ 5-6. Where its
Route 66 beer sold on draft, Plaintiff provides bars with
Route 66-branded tap handles. Id. ¶ 5.
Plaintiff shipped and sold its beer using its Route 66 marks
in New Mexico, Kansas, Arkansas, and Missouri. Id.
¶ 8. Plaintiff currently uses a distributor, Admiral
Beverage Company (“Admiral”) to sell its beer in
New Mexico. Id. ¶ 9.
2012, Plaintiff has used its marks to advertise beer online
throughout the United States, including New Mexico, by way of
its website, YouTube channel which has garnered over 82, 000
views, and Facebook account. See Declaration of
André Levy, ¶¶ 6-7; 9, ECF No. 49,
(“Levy Decl.”). Since 2016, Plaintiff has also
advertised images of its Route 66 beer and marks on its
Instagram account where it has over 31, 000 Instagram
“followers.” Id. ¶ 8. Plaintiff has
also used these marks to advertise beer on billboards, radio
advertisements, t-shirts, placards, in-store displays, and
sponsorships. Id. ¶ 11. However, in 2014 and
2015 Plaintiff's advertising of its Route 66 beer in the
United States “tailed off” because of low product
sales and by 2016 and 2017 Plaintiff spent no money
advertising “above the line” of its beer in in
the United States. See Deposition of André
Levy, 57:21-25 - 58:1-7; 59:8-25 - 60:1-23, ECF No. 52-1
(“Levy Dep.”). According to Defendants,
“above the line” advertising refers to product
advertising conducted by radio, television and magazine,
whereas “below line” advertising refers to
advertising conducted on the internet. See
Defs.' Resp. Br., ¶ 2, ECF No. 52.
Mr. Lackey Establishes the Brewery
Lackey opened the Brewery in July 2016 and brewed and sold
draft beer there. See UF ¶¶ 17; 12. The
Brewery used the words Route 66 in connection with selling
beverages. See Pl.'s Req. for Admis., Ex. 2, ECF
No. 48-1. Mr. Lackey is the Brewery's president and sole
owner and he decided to use the name Route 66 in connection
with the Brewery. See UF ¶¶ 10-11. Mr.
Lackey was unaware of Plaintiff and its Route 66 beer at the
time he established the Brewery. See Affidavit of
Henry Lackey, ¶ 5, ECF No. 52-1 (“Lackey
Aff.”). Before opening the Brewery, Mr. Lackey did an
internet search of the terms “Route 66 brewery, ”
but not of the terms “Route 66 beer.” Deposition
of Henry Lackey, 55:7-12, ECF No. 48-1 (“Lackey
Dep.”). Nor did Mr. Lackey consult with a trademark
attorney before opening his business. See UF ¶
15. Mr. Lackey believed that Route 66 belonged in the public
domain and stated that “I think that if you want to use
something that's already been made popular by somebody
else, then that's the risk you run that other people are
going to use it, ” and that he chose to use the words
Route 66 with the understanding that “someone else is
going to sell Route 66 beer.” Lackey Dep. 91:5-8;
92:1-8. An internet search of the term “Route 66
beer” would have returned Plaintiff's website as
the first result. See UF ¶ 14.
the Brewery opened, one of its best-selling beers was a pale
ale that Defendants referred to as “Route 66 Junkyard
Brewery Metro” on a menu. Id. ¶ 23.
Defendants also referred to the pale ale as a “Route 66
Junkyard Metro” on a dry erase board. Id.
Defendants used the following logo to promote their beer:
Ex. 8, ECF No. 48-1. This logo was used on the Brewery's
Facebook page, food and drink flyers, menus, and on various
signs located on the Brewery's interior walls, the bar
where drinks were served, and on a sign next to the
Brewery's exterior doorway. See id.; Pl.'s
Exs. 22 - 26, ECF No. 48-1. Defendants' logo differed
from Plaintiff's Route 66 shield mark in five ways:
Defendants' logo has a spigot on the side; is yellow; has
bubbles within the yellow coloring; contains the word
“Junkyard;” and has a different font.
See Defs.' Motion for Summary Judgment on
Non-Infringement, ECF No. 56 (“Defs.' MSJ”);
Defs.' Resp. Br. ¶ 3(a)-(e); Pl.'s Reply Br. 1,
ECF No. 54.
requests for admission, Defendants admitted that they used
the words Route 66 to identify the Brewery and not to
identify the Brewery's address as being on Route 66.
See UF ¶ 28. The Brewery's physical address
is 1634 B Highway 66. Id. ¶ 29. In an
affidavit, though, Mr. Lackey stated that he did use the name
Route 66 to describe where the Brewery was located.
See Lackey Aff. ¶ 4.
Plaintiff's Cease-and-Desist Efforts
September 21, 2016, about two months after Mr. Lackey
established the Brewery, Plaintiff sent Mr. Lackey a
cease-and-desist letter notifying him of Plaintiff's
trademark registrations and requesting that he stop using
Route 66 in connection with selling and brewing beer.
See UF ¶ 24. Mr. Lackey did not respond, so on
November 4, 2016 Plaintiff sent a follow-up letter.
Id. Mr. Lackey replied in late November saying
“Route 66 Junkyard Brewery is the name of the location
and not the name of a beer that we sell. We currently have on
beer that we brew and it is called Metro, … We will
never sell a beer called route 66!” Pl.'s Ex. 1
(cited by Plaintiff as Ex. 28), ECF No. 48-1. Plaintiff
responded to Mr. Lackey in December and reiterated its
infringement claim. See UF ¶ 26.
receiving Plaintiff's cease-and-desist letter, Mr. Lackey
researched Route 66 beer to determine whether he should
comply with the letter. See Lackey Aff. ¶ 13.
Mr. Lackey learned that Sierra Blanca Brewing Company in
Moriarty, New Mexico sold a Route 66-branded beer.
Id. ¶ 24; Lackey Dep. 24:19-25 - 25:1-20. In
fact, Mr. Lackey sold Sierra Blanca's Route 66 beer at
the Brewery, and he knew that Plaintiff also targeted Sierra
Blanca with cease-and-desist letters. See Lackey
Dep. 22:21-24. Despite Plaintiff's cease-and-desist
letter to Defendants in 2016, Defendants sold Sierra
Blanca's lager and referred to it verbally and on a dry
erase board as a Route 66 beer. See UF ¶ 27.
brewery, Blue Grasshopper Brewing in New Mexico, also sold
Sierra Blanca's Route 66 branded beer, with Admiral
acting as the distributor for several years. See
Affidavit of Greg Nielsen, 1, ¶ 1, ECF No. 52-1
(“Nielsen Aff.”). Plaintiff sent Blue
Grasshopper's owner, Mr. Nielsen, a cease-and-desist
letter in mid-2017, asking him to stop selling Sierra
Blanca's Route 66 beer. Id. ¶ 2. Mr.
Nielsen still sells Sierra Blanca's beer, but the beer
goes by a new name. Id. ¶ 3
Plaintiff's Beer Sales in the United States and
Admiral's Distribution of Plaintiff's Beer
Levy, Plaintiff's Trademark Advisor, testified that
Plaintiff sold no Route 66 beer in New Mexico until 2016,
although Plaintiff did continually advertise its beer and
marks in New Mexico by means of online advertisements.
See Levy Dep. 67:3-17. Plaintiff had on its website
a list of locations in the United States where its Route 66
beer was sold retail in stores or bars so that customer could
find where to buy its beers. Id. 82:22-25 - 83:1-2.
No. more locations were added to this database after May
2014, although the database was incomplete. Id.
84:8-12. Mr. Levy testified that Plaintiff's beer sales
in the United States temporarily ceased while Plaintiff
“reviewed the situation” because of poor product
sales. Id. 84:16-25.
long that temporary cessation lasted is disputed by the
parties. One of Plaintiff's business records
titled “Route 66 sales 2016 to 2017” shows that
Plaintiff's beer sales were in Europe and the Middle
East. At the time Mr. Levy was deposed in July 2017, however,
Plaintiff had renewed beer sales within the United States,
including New Mexico.
Lente, Admiral's Craft Brand Manager, purchases and
distributes beer to retailers in the Albuquerque area.
See Affidavit of Kevin Lente, ECF No. 61-1
(“Lente Aff.”). Mr. Lente stated in an affidavit
that Admiral sold Plaintiff's Route 66 beer in July 2017
and that Plaintiff's beer was sold retail through
Jubilation Wine & Spirits in Albuquerque, New Mexico.
Id. ¶¶ 2, 4. Because Plaintiff's beer
sales underperformed, Mr. Lente informed Plaintiff in an
October 6, 2017 e-mail that Admiral did not plan to purchase
more of Plaintiff's beer. Id. ¶¶ 5-6.
Until Plaintiff approached Mr. Lente in 2017 to sell its
beer, Mr. Lente never heard of Plaintiff or its Route 66
beer. Id. ¶ 7.
submitted a rebuttal affidavit from Greg Brown, Mr.
Lente's superior at Admiral. In his affidavit, Mr. Brown
stated that “Mr. Lente did not have authority to make
the statements contained in his … affidavit …
and Mr. Lente was not making statements in that affidavit on
behalf of Admiral.” Affidavit of Greg Brown, ¶ 3,
ECF No. 65-1 (“Brown Aff.”). Mr. Brown stated
that “Admiral is currently the distributor of
Lodestar's Route 66 beer in New Mexico and will
distribute additional Lodestar branded beer in New
Mexico.” Id. ¶ 4.
supplemental affidavit, Mr. Levy, stated that Admiral
“is currently and has continuously been the distributor
for Lodestar's Route 66 beer in New Mexico and will
distribute additional Lodestar Route 66 branded beer in New
Mexico;” that Admiral “has distributed
Lodestar's Route 66 beer to at least three locations in
Albuquerque, all of which currently offer the product for
sale;” and that it is also for retail sale outside of
New Mexico. See Supplemental Affidavit of
André Levy, ¶¶ 2-4, ECF No. 65-2
(“Suppl. Levy Aff.”). Mr. Levy also stated that
in October 2017 Plaintiff marketed and promoted its Route 66
beer at the National Beer Wholesalers Association in Las
Vegas, Nevada and that it is establishing regional and
national distribution agreements to sell its beer nationwide.
Id. ¶¶ 5-6.
brought a two-count amended complaint on March 17, 2017
against Defendants, claiming that Defendants' alleged use
of its federally registered Route 66 marks in connection with
the sale of beer constitutes infringement (Count I) and
unfair competition (Count II), both of which are violations
of the Lanham Act. In its Prayer for Relief, Plaintiff seeks
to permanently enjoin Defendants from the continued use of
the word Route 66; a monetary award for corrective
advertising to rectify alleged customer confusion caused by
Defendants' alleged infringing use; disgorgement of
profits; damages and treble damages under the Lanham Act; and
attorneys' fees. See Am. Compl. ¶¶ 1-7
Lackey answered pro se on behalf of the Brewery.
See ECF No. 13. The Court struck that pleading as
violating D.N.M.LR-Civ. 83.7, which requires a business
entity to appear in federal court through legal counsel.
See ECF No. 14. Defendants complied with the
Court's Order and Defendants' subsequent filings have
been through counsel. In their Answer, Defendants pleaded
seven affirmative defenses: fair use, unclean hands,
trademark abandonment, failure to mitigate damages, failure
to state a claim upon which relief can be granted, equitable
estoppel, and lack of standing. See Defs.' Answer,
ECF No. 29, 4-6. On October 16, 2017 discovery closed and the
deadline to submit dispositive motions and fully briefed
Daubert motions was October 30, 2017. Both parties
timely moved for summary judgment on the issue of
infringement, arguing that they were entitled to judgment as
a matter of law on whether Defendants infringed on
December 20, 2017, after the dispositive motion deadline
passed, Defendants moved to reopen discovery to formally
depose Messrs. Lente and Brown from Admiral, and to re-depose
Mr. Levy. See ECF No. 67. Defendants contended that
Mr. Levy made contradictory statements concerning whether
Plaintiff's beer was only sold internationally, and that
reopening discovery would resolve material fact issues
concerning whether Plaintiff's marks are commercially
strong and whether consumers are likely to encounter
Plaintiff's mark and Defendants' logo. The Honorable
Jerry H. Ritter, United States Magistrate Judge, denied
Defendants' motion to reopen discovery to depose the
witnesses. Judge Ritter found that Defendants had three
months of discovery to follow-up with Mr. Levy, but never did
so, and that the need to depose the Admiral witnesses was
foreseeable, yet Defendants never bothered to depose either
witness. See Mem. Op. and Order, ECF No. 73.
PLAINTIFF'S EVIDENTIARY OBJECTIONS
turning to the merits of the case, the Court must address
Plaintiff's numerous evidentiary objections to statements
in the affidavits of Messrs. Lente, Lackey, and Greg Nielsen.
All three men appear as trial witnesses. See
Pretrial Order, ECF No. 72. Rather than setting forth its
legal analysis in a motion to strike, which is the more
common practice for mounting a challenge of this kind,
Plaintiff instead objected to the witnesses' affidavits
in its summary judgment briefs. For their part, Defendants
unhelpfully failed to respond with facts and legal arguments
to Plaintiff's challenges, even though as the proponent
of the evidence, it is their burden to show that the
witnesses' statements are admissible or that Defendants
can “put the … substance or content of the
evidence  into an admissible form” for trial.
Brown v. Perez, 835 F.3d 1223, 1232 (10th Cir.
Affidavit of Kevin Lente
Lente is an employee at Admiral. Admiral is purportedly both
Plaintiff's and Sierra Blanca's beer distributor.
Plaintiff challenges Mr. Lente's affidavit statements
that Plaintiff's beer did not perform well in sales, that
Admiral did not order more of Plaintiff's beer, and that
it had no plans to purchase more of Plaintiff's beer.
Plaintiff also challenges Mr. Lente's statement that he
was unaware of Plaintiff or its beer until 2017 and that New
Mexico law prohibits microbreweries from selling beer not
produced in New Mexico such that Plaintiff's beer cannot
be sold in a microbrewery in New Mexico. See Lente
Aff., ¶¶ 5-7; 9-10; Pl.'s Evidentiary
Objections to Lente Aff., ECF No. 62. Plaintiff objects that
Mr. Lente lacks personal knowledge to make these statements,
that his statements exceed the bounds of lay testimony, are
hearsay, irrelevant, and that Mr. Lente was not disclosed as
a potential witness before discovery ended in violation of
is incorrect that Mr. Lente lacks personal knowledge that
Plaintiff's beer sales underperformed, that Admiral
ordered no more of Plaintiff's beer and had no plans to
do so, and that Mr. Lente was unaware of Plaintiff or its
beer until 2017. It is hard to see how Mr. Lente lacks
personal knowledge on these matters given that he oversees
buying and selling beer to retailers. Plaintiff's
rebuttal affidavit from Greg Brown that Mr. Lente's
statements were not made on Admiral's behalf, that Mr.
Lente “did not have authority” to make his
statements, and that “Admiral is currently the
distributor of Lodestar's Route 66 beer in New Mexico and
will distribute additional Lodestar [beer] in New Mexico,
” does not decide the matter. Rather, these are issues
over which there is a genuine dispute of material fact for
the trier of fact to resolve.
also says that Mr. Lente's statements about whether
Plaintiff's beer is sold in New Mexico are irrelevant to
the likelihood of confusion analysis. Citing the Tenth
Circuit's statement that “federally registered
marks receive nationwide protection regardless of the area in
which the registrant actually used the mark, ”
First Sav. Bank, F.S.B. v. First Bank Sys., Inc.,
101 F.3d 645, 651 (10th Cir. 1996), Plaintiff argues that its
2012 and 2013 federal registration of its marks put
Defendants on nationwide notice that they could not use a
confusingly similar mark, regardless of whether Plaintiff
sold beer in New Mexico. However, Plaintiff's
registration of its trademarks does not answer the question
of whether, in fact, Plaintiff's marks and
Defendants' logo are confusingly similar. Mr. Lente's
statements concerning the scale of Plaintiff's business
presence in New Mexico are relevant evidence of whether
consumers are likely to affiliate the parties' goods and
whether the parties compete in overlapping channels. The
Court will consider as part of the summary judgment record
Mr. Lente's affidavit statements in paragraphs five
the Court will not consider as part of the summary judgment
record Mr. Lente's affidavit statements in paragraphs
nine and ten in which Mr. Lente stated that “New Mexico
law prohibits New Mexico Microbreweries from selling out of
state beer” and therefore “Lodestar's Route
66 beer cannot be sold at any New Mexico Microbrewery.”
Defendants have not shown that Mr. Lente is competent to
provide opinion testimony about the rules governing
microbreweries. Paragraphs nine through ten of Mr.
Lente's affidavit will not be considered in the
Court's evaluation of the summary judgment evidence.