New Belgium Brewing and Oasis Texas Brewing Settle Slow Ride Trademark Dispute
If you've been following our dispute regarding the use of the trademark SLOW RIDE, here's a quick note to get you up to date.
New Belgium Brewing, registered owner of the trademark SLOW RIDE® with the U.S. Patent and Trademark office, has agreed to settle out of court with Oasis Texas Brewing over rights to use the trademark. The agreement confirms that New Belgium Brewing owns exclusive nationwide rights to the mark SLOW RIDE other than in the State of Texas, where Oasis will have sole right to use the mark. New Belgium will continue to sell SLOW RIDE SESSION IPA across the U.S., and the same beer will be available in Texas but under the mark NEW BELGIUM SESSION IPA.
“We went into this knowing that we had the U.S. rights to the trademark SLOW RIDE,” said New Belgium Brewing CEO, Christine Perich. “We had high hopes that we could work together and coexist, but the team from Oasis was opposed to that and so we had to seek clarification through the court. In an effort to put this behind us and move forward with the business of running our business, we’re agreeing to Oasis’s use of the mark in Texas and we retain exclusive rights for the rest of the U.S. We’re comfortable with that.”
Colorado Complaint/Texas Filing Summary
New Belgium Brewing filed a declaratory judgment action in the US District Court of Colorado on February 9, 2015, seeking geographic clarification around our trademark rights to the name Slow Ride. Our decision to file in Colorado was based on Oasis’s prior claim that they had sufficient commercial use to support common law trademark rights within the State of Colorado. Oasis then reversed itself, filing a motion seeking dismissal on grounds of lack of personal jurisdiction in the state of Colorado. The District of Colorado action was dismissed on May 1, 2015.
During its briefing on the motion to dismiss, Oasis retracted several allegations previously made in its cease-and-desist letters to New Belgium, including claims that it had commercial use within the State of Colorado. The District Court’s decision was in no way a reflection of the merits of our case, but simply a redirection to the US District Court of Texas as the proper venue to pursue geographic clarification.
We’re making the Colorado filing documents, and the updated Texas complaint, filed May 27, 2015, available for download:
New Belgium v Oasis complaint (Texas filing) PDF
Oasis motion to dismiss or transfer venue (Colorado filing) PDF
Accompanying affidavit of Schleder ISO motion to dismiss (Colorado filing) PDF
New Belgium opposition to motion to dismiss or transfer (Colorado filing) PDF
Oasis reply ISO motion to dismiss (Colorado filing) PDF
Order granting motion to dismiss for lack of personal jurisdiction (Colorado filing) PDF
Slow Ride trademark complaint facts
Prior to releasing our newest year round beer, Slow Ride Session IPA, New Belgium Brewing conducted an exhaustive trademark search to ensure that the name was available. We then filed to register the trademark in May 2014, which was granted by the US Patent and Trademark Office without opposition.
We later learned that Oasis Texas Brewing Company in Austin, Texas, was producing a beer by the same name. We proactively reached out to Oasis, suggesting a number of possible solutions that would allow both brands to exist in the market, but Oasis was not open to working with New Belgium toward a productive solution.
Five months after we filed to register the Slow Ride name, Oasis filed for trademark. While we would have preferred to resolve this amicably with Oasis, they are unwilling to work with us and have threatened New Belgium with a lawsuit, thereby compelling us to seek clarification from the court.
At this time we are only seeking geographical clarification as to our secured trademark. To avoid further conflict, we released “Slow Ride Session IPA” as “New Belgium Session IPA” in Texas until this issue is resolved.
The background of New Belgium Slow Ride Session IPA
Earlier this year New Belgium launched a new year-round release, Slow Ride Session IPA. The name for Slow Ride Session IPA is inspired by the Slow Ride bike “race” at Tour de Fat, a philanthropic event we’ve been doing for more than 15 years (like this one in Seattle in 2010 or this one in Austin in 2008). The “race” itself celebrates the idea of slowing down and taking it easy (last rider across the line wins), which we think well represents the idea of a Session IPA. This is a real and authentic story to our brewery and culture.
Once we landed on Slow Ride as a name, we conducted an exhaustive trademark search to ensure that the name was available. After thoroughly investigating the availability of the Slow Ride trademark, New Belgium filed for a federal registration of the mark with the United States Patent and Trademark Office (“US PTO”). After publication of the mark and without opposition, the US PTO granted New Belgium the registration for Slow Ride.
Oasis Texas Brewing Company in Austin is currently brewing a pale ale called Slow Ride. The brewery is new, and started production in 2014. New Belgium did not know about Oasis Texas Brewing’s pale ale when we selected the name and filed to register the Slow Ride mark with the US PTO in May 2014.
When we learned of the existence of Oasis Texas Brewing and its new beer, we proactively reached out to them to see if we could resolve the issue. We suggested a number of possible resolutions. Unfortunately, Oasis Texas Brewing was not amenable to working with New Belgium to find a productive solution.
Although Oasis did not file to register its intellectual property until more than five months after New Belgium, they now claim exclusive nationwide rights in the mark SLOW RIDE. Because the parties were unable to informally resolve the matter, New Belgium has filed a claim in Federal District Court requesting a declaratory order from the Court that sorts out the rights of the parties. While this claim is pending, we have determined not to offer our new Session IPA under the name Slow Ride within the State of Texas. Instead our new beer will be offered in Texas as New Belgium Session IPA, with only a minor modification to our label to remove any reference to Slow Ride. Of course, it will be the same great liquid offered across the entirety of our current distribution footprint.
The reality is that this situation is becoming more commonplace with the proliferation of breweries and brands. We operated with the best intentions and did full due diligence in regards to the name Slow Ride. We continue to hope to achieve an agreement suitable to all parties or otherwise resolve the matter amicably, and we certainly wish Oasis Texas Brewing Company every success.
Where did the name Slow Ride come from?
The Slow Ride is an event at our Tour de Fat that we’ve been doing for many years. The idea is to ride as slowly as possible without falling and the person who finishes last wins. It’s a great metaphor for the rewards of slowing down and enjoying the finer things in life, and we felt that suited a Session IPA perfectly.
How does New Belgium make sure it has rights to a name?
After we land on a possible name, we typically contact our outside counsel and initiate an exhaustive trademark search. They search for existing trademark registrations, pending applications, and even abandoned applications. Additionally they look at common law usage. The search reflects an in-depth analysis and seeks to allow a complete understanding of the proposed name’s availability. In this case, as a result of the search, New Belgium was comfortable and confident of its right to use the term SLOW RIDE, a conclusion that was later validated by the U.S. PTO when it granted New Belgium a federal registration for the mark and exclusive nationwide rights.
You guys are a large brewery that has been in the industry for over 20 years; how does someone like Oasis compete with you for Intellectual Property?
With close to 3,000 breweries in the country, these situations are becoming commonplace. It doesn’t take a great deal of money to run a check on trademarked names and to file to register your intellectual property. That lets other brewers know they need to move on down their list of options. If the name comes up clean and a brewery starts developing that brand, beer and message, the stakes get higher for all parties. Best practice is to conduct due diligence and register the name – every brewery should be thinking along those lines or we will continually run into this issue.
What steps did you take to resolve the matter with Oasis Texas Brewing Company before filing the complaint?
We reached out to the folks at Oasis Texas Brewing on numerous occasions to see if we could resolve the issue. We suggested a number of possible solutions. We also met with the principals of Oasis Texas Brewing at their brewery in Austin in an effort to resolve the matter, but left the meeting at an impasse. New Belgium continues to desire an amicable resolution to this matter, but unfortunately we had no choice but to ask a court to intervene given Oasis Texas Brewing’s continual threats of suit.
Why is a large brewery like New Belgium bringing a lawsuit against Oasis Texas Brewing Company, a recent entrant to the craft scene?
We’ve spent a lot of time, money and energy trying to resolve the matter informally, and we felt that this action was the best way to definitively resolve our dispute. New Belgium is not asking the court to order Oasis to take any action or pay New Belgium damages. Rather, we are simply asking the Court to let both parties know the extent of their rights in the Slow Ride mark and to finally determine the geographic areas, if any, where each party is exclusively entitled to distribute its Slow Ride branded beer.
Why did you try to file this case in Colorado?
In their initial cease and desist letter, OTBC claimed national rights to the brand Slow Ride including in Colorado. Since their claim extended well beyond Texas and into our home state, we thought it appropriate to file with our home state Court.
Why is New Belgium filing a second lawsuit against Oasis Texas Brewing Company after the Colorado lawsuit was dismissed?
The District Court of Colorado’s decision was purely procedural, with the Court finding that Oasis does not have sufficient business in the State of Colorado to allow the proceeding to continue in a Colorado court. The Colorado District Court did not evaluate the actual substance of our claim, and we have been unable to agree on a solution with Oasis during our settlement discussions. Therefore, we will continue to seek geographic clarification in the United States District Court for the Western District of Texas, Austin Division.