Would you think a company that makes beer also makes hand sanitizer? Prior to Covid, the answer to question was likely no. Now the answer is not as clear cut. Recently Plaintiff 28 Mile Vodka Company, LLC (“28 Mile”) filed a declaratory judgment of the non-infringement of U.S. Trademark No. 5,787,971 for “Toughtown” owned by Defendants’, Hopmaniacs, LLC and Kings & Convicts BP, LLC (“Hopmaniacs”). The complaint also requested acknowledgement of the enforceability of Plaintiff’s U.S. Trademark Application Serial No. 88/900088 for “Tough Town”.

Background

28 Mile is a vodka and gin distillery in Highwood, Illinois. The city of Highwood is known by the nickname Tough Town. Due to the economic downturn in response to the Covid-19 crisis, 28 Mile shifted their operations from manufacturing spirits to manufacturing hand sanitizer. 28 Mile branded its hand sanitizer “Tough Town” after the city nickname. They donated 12,000 bottles of hand sanitizer to the Chicago Police Department. After receiving favorable press and interest in the product, 28 Mile decided to manufacture the hand sanitizer for profit and accordingly filed a trademark application on “Tough Town” for hand sanitizer. Hopmaniacs contacted 28 Mile alleging infringement of their “Toughtown” mark due to a likelihood of confusion.

Cease and Desist

Hopmaniacs sells handcrafted IPA beer. They do not sell spirits or hand sanitizer. Hopmaniacs mark is drawn to “Beer” in International Class 032. In their cease and desist letter, Hopmaniacs alleges that the marks are identical in sight, sound, and meaning. Further they allege that the goods are closely related as hand sanitizer is typically 60% alcohol and thus is related to alcoholic beverages. Hopmaniacs also points to the fact that many beverage companies are currently producing hand sanitizer due to the Covid-19 crisis, thus strengthening the link between the products.

Complaint

28 Mile denied infringement as their mark was filed for “alcohol for cleaning purposes” in International Class 003 and “antibacterial alcohol skin sanitizer” in International Class 005. 28 Mile alleges that there can be no likelihood of confusion between the marks for several reasons. First, purchasers must be over age 21 to purchase Hopmaniacs product whereas anyone can purchase the hand sanitizer by 28 Mile. Second, the marks convey a completely different commercial impression. Further, 28 Mile argues, the actual products themselves have no relation to one another. Hand sanitizer is not consumable while beer is consumable. 28 Mile also argues that they do not share the same consumers or channels of distribution and the area and manner of concurrent use of the respective marks are non-existent.

Prior to the Covid-19 crisis, very few, if any, distilleries or breweries were also making hand sanitizer. As such, a likelihood of confusion as to the origin of the goods would be tenuous. However, since the Covid-19 crisis, increasingly more breweries and distilleries have started to manufacture hand sanitizer to mitigate any economic damages to their business. There is at least a reasonable argument since the Covid-19 crisis that a company manufacturing beer or spirits for consumption would also be manufacturing hand sanitizer. Stay tuned for how this one plays out