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Shorebilly

Judge orders cancellation of ‘Shorebilly’ trademark

A federal judge has not only thrown out an Ocean City-based trademark lawsuit over the use of the word “Shorebilly” but ordered the trademark at issue be canceled.

Senior U.S. District Judge Marvin J. Garbis ruled Teal Bay Alliance LLC’s trademark registration was defective and misled the U.S. Patent and Trademark Office. But even if the trademark were valid, Garbis continued, Teal Bay failed to show there would be any confusion with Southbound One Inc.’s former Shorebilly Brewing Co.

“The ‘bottom line’ is that Teal Bay had, and has, no right to interfere with Southbound’s use of the name ‘Shorebilly Brewing Company,’’’ Garbis wrote Jan. 26.

Teal Bay filed an appeal to the 4th U.S. Circuit Court of Appeals last week, according to online court records.

Southbound re-named its Ocean City boardwalk bar during the litigation, and the company’s lawyer said Tuesday that owner Danny Robinson will keep the name Backshore Brewing Company. Still, Robinson was pleased with Garbis’ ruling.

“It’s nice to see his position was finally vindicated,” said Donna M.D. Thomas of Astrachan Gunst Thomas P.C. in Baltimore. “This put a tremendous amount of strain on our client.”

Teal Bay, founded in 2008, sells clothes and other merchandise with a cartoon wave logo and the word “Shorebilly” on them. The merchandise is sold at locations around Ocean City and used to be sold on Teal Bay’s website, shorebillyusa.com.

Owners Marcus and Barbara Rogerson initially filed for a trademark with the U.S. Patent and Trademark Office in April 2010 to use “shorebilly” for clothing and merchandise, according to Garbis’ opinion. The company filed its statement of use in June 2011, which the USPTO determined was not acceptable; an agency official later explained to Marcus Rogerson the difference between ornamental use and a trademark, Garbis wrote.

Teal Bay subsequently submitted three t-shirts with a small mark over the heart “in the Polo and Izod fashion that the examiner had said was illustrative of a proper trademark use,” according to Garbis’ opinion.

The trademark was approved in October 2011 but Teal Bay has never commercially used the samples it submitted, Garbis wrote. The judge found Teal Bay intended to “deceive the USPTO” into approving the trademark application.

A month after Teal Bay secured its “shorebilly” trademark, Robinson registered for six domain names related to “Shorebilly Brewing,” the opinion says. Robinson began exploring trademark protection in early 2012 and was granted a trademark to use “shorebilly” for a bar, nightclub and brewery in April 2013, Garbis wrote.

Teal Bay sent Southbound a cease and desist letter in October 2012 and filed suit in July 2013.

Because Teal Bay gave a “material false representation” to the patent office, Garbis ruled the case was “exceptional” under the Lanham Act and ordered the company to pay more than $30,000 in attorneys’ fees to Southbound.

Samuel D. Littlepage, a lawyer for Teal Bay, did not respond to a request for comment. Littlepage is a member of Dickinson Wright PLLC in Washington, D.C.

Had Teal Bay’s trademark been valid, Garbis added, it would have been “extremely weak,” noting the word “shorebilly” had been used for other commercial purposes in Ocean City. Teal Bay and Shorebilly were not competing with each other, the judge said.

“Although Teal Bay sought to sell t-shirts in the same city as Southbound, the Court does not find any indication that a customer who bought a Shorebilly Brewing Company promotional t-shirt would be likely to think that the source was Teal Bay, the producer of totally dissimilar t-shirts that did not refer to the brewing company,” Garbis wrote.

The case is Teal Bay Alliances LLC v. Southbound One Inc., 1:13-cv-02180-MJG.