OCEAN CITY — The reason there aren’t tourists walking around with shirts advertising “Shorebilly” beer is because of a contentious trademark case that could be a cautionary tale for new businesses.
Donna Thomas, an attorney with Astrachan Gunst Thomas P.A. in Baltimore, discussed the lawsuit at the Maryland State Bar Association’s Legal Summit and Annual Meeting on Friday.
“He had a complete home run,” she said of client Danny Robinson. “He was completely vindicated in the end.”
But by the end of litigation, which included attorney fees for Robinson, he had abandoned the Shorebilly mark because of the legal fight. Instead, he opened Backshore Brewing Co.
The plaintiff, Teal Bay Alliance LLC, had registered the trademark “shorebilly” and used it on shirts, according to Thomas. The Teal Bay owners told the U.S. Patent and Trademark Office that the mark was used as a trademark but that they never used it commercially. A federal judge eventually found that Teal Bay’s representations to the USPTO were fraudulent and canceled the trademark registration.
Robinson said he had done a cursory search for use of “shorebilly” in connection with beer or brewing but found none. When he attempted to register the mark, he was initially rejected because of the likelihood of confusion with Teal Bay’s use. Teal Bay sued in 2013, after Robinson reapplied and was granted a trademark. Thomas said there were repeated attempts to resolve the dispute without trial.
“It’s a very painful lesson,” she said, citing her frustration with the case and calling it the “worst-case scenario” for a trademark dispute.
Robinson said that in hindsight he was “too married” to the term “shorebilly” and, had he known how hard-fought the case would be, he wouldn’t have pursued it so vigorously.
Thomas said that as a business attorney she’s learned that you never know who will be “on the other side” litigating against you — and how hard they will fight.
“Even if you can win a home-run case … it’s not always worth it,” she said.