(Knoxville, TN) – The other side of the story.



On Thursday, I posted about a trademark infringement lawsuit between two breweries, Marble Brewery and Marble City Brewing. Marble Brewery (plaintiff) President and Owner, Jeff Jinnett, originally declined to comment on the litigation, “citing company policy,” according to Metro Pulse. He’s since changed his mind. Below is a letter from Jinnett written to the Knoxville beer community (courtesy of the Knox Beer Snobs blog).

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To The Beer Lovers of Knoxville:

The Marble Brewery, located in Albuquerque, New Mexico, is a small independent microbrewery producing, packaging and distributing our handcrafted ales. The unfortunate conflict that has arisen around using the name “Marble” in conjunction with breweries, beer and ale has obviously inflamed the passions of brewery and beer lovers in East Tennessee and warrants further explanation and clarification.

When we organized our brewery in 2007 and worked at selecting a name, the first thing we did was take our list of potential names to a trademark attorney and subject them to scrutiny to insure that they were available for our use. Some of our top choices had already been trademarked by others, which led us to scratch them off the list to avoid conflicts and confusion. We selected the name “Marble Brewery” for our new brewery and secured the federal trademark for the use of that name for our brewery and our beer. This is standard procedure for organizing a company that is building an identity and working to establish itself – having your trademark registered with the US trademark and patent office is extremely important. And once you have secured a trademark, the responsibility for monitoring unauthorized use falls on the trademark holder. If you allow the unauthorized use of your mark, it can weaken and even negate it.

Several months ago, it was brought to our attention that a brewery was planned in Knoxville with a name that was very similar to our trademark (Marble City Brewing Co.). As you can imagine, this was concerning – our business models were almost exactly the same (a packaging brewery and taproom) and our Marble Brewery was preparing for increased distribution across the country. I assumed that the name duplication was accidental and contacted Mr. Borsodi, the owner of Marble City Brewing Co. to explain that we had already trademarked the name and express my concern over the confusion that was sure to arise with two breweries having basically the same name. My suggestion was to come up with a unique name that he could trademark in order to create his own identity. My suggestions and concerns were rebuffed and Mr. Borsodi told me that changing their name was not an option. I reiterated that he was not yet producing beer, that we held the trademark for “Marble” and that is was inevitable that at some time in the near future our brands would cross and cause confusion.

There was no animosity involved – I want Mr. Borsodi’s brewery to succeed. We are both part of the community of small breweries and should have respect for each other. Unfortunately, I was informed that their brewery naming would proceed using our trademarked name. At that point I contacted a Tennessee based trademark attorney to review our options in resolving this dispute. The first step was sending a “cease and desist” letter requesting that Mr. Borsodi not use our trademarked name. This was ignored and Mr. Borsodi proceeded to attempt to trademark “Marble City Brewing Co.” The United States Patent and Trademark office rejected the trademark application due to the likelihood of confusion between our name,” Marble Brewery”, and Mr. Borsodi’s proposed name, “Marble City Brewing Co.”. Despite this fact, Mr. Borsodi, has pushed ahead to use the name “Marble City Brewing Co.” – and at this point our only recourse was to file suit in a Tennessee court to stop infringement of our trademark. His use infringes on the Marble Brewery name, whether or not we are both in the same market. This is a federal trademark. Unfortunately, if I don’t enforce our mark, I could lose my trademark rights – even here in New Mexico.

Nevertheless, I will emphatically state that this lawsuit seeks no monetary damages, nor does it seek to prevent the opening of a new brewery in Knoxville. The sole intention is to protect our federally recognized rights. This experience has not been fun for us. It is expensive, and it takes me away from my main goal here at Marble Brewery – to brew great beer and build our business. I still remain hopeful that we can resolve this issue amicably, as again, we are not attempting to keep Mr. Borsodi from opening his brewery.

As a graduate of Karns High School and the University of Tennessee – I am proud to have my beer on the shelf in my hometown of Knoxville.

Best Wishes,

Jeff Jinnett, President and Owner

Marble Brewery Inc.