445 F.Supp.3d 1113
S.D. Cal.2020Background
- Stone Brewing owns the federally registered STONE® mark (registered 1998) and obtained incontestable status in 2008; it sued MillerCoors after a 2017 Keystone rebrand that emphasized “STONE”/“STONES.”
- MillerCoors markets Keystone (including Keystone Light) and historically used the nickname/wording “STONES” on some packaging; it refreshed packaging in 2017 separating KEY and STONE and ran "OWN THE STONE"-style promotions.
- Stone alleges trademark infringement, dilution, and related claims; MillerCoors counterclaimed for declaratory judgments (right to use STONE/STONES, non-infringement, and common-law ownership) and asserted laches.
- The parties filed cross-motions for summary judgment; the court granted judicial notice of PTO records and applied the Sleekcraft multi-factor test for likelihood of confusion.
- Court ruled: Plaintiff’s summary judgment motion GRANTED IN PART and DENIED IN PART; Defendant’s motion DENIED; court granted Plaintiff summary judgment on Defendant’s laches defense and found triable issues on infringement, priority, dilution, and actual confusion/survey evidence.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity/ownership of STONE mark | Stone: federally registered and incontestable, proving validity and ownership | MillerCoors: challenges practical strength but not registration status | Court: STONE® is registered and incontestable; ownership and protectability established for summary judgment purposes |
| Likelihood of confusion (infringement) | Stone: marks effectively identical ("STONE" dominant), overlapping channels, consumer confusion after 2017 rebrand | MillerCoors: packaging, house marks, market segments differ; surveys and placement show little confusion | Court: disputed material facts on key Sleekcraft factors (similarity, strength, channels, surveys); denied Stone's summary judgment on infringement (jury issue) |
| MillerCoors' priority/common-law rights to "STONE"/"STONES" | Stone: MillerCoors' pre-2017 uses were sporadic/non‑trademark uses and not continuous/public as source identifiers | MillerCoors: used "STONE/STONES" in commerce since ~1991 (e.g., 30‑pack labeling), claiming senior user status | Court: genuine dispute over sufficiency/continuity of MillerCoors' pre-1996 use; denied MillerCoors' summary judgment on priority |
| Dilution (fame requirement) | Stone: long national sales/media exposure makes STONE famous and distinctive for dilution claim | MillerCoors: STONE is at best a niche/ craft‑beer mark, not widely recognized by general US consuming public | Court: fame is a high factual burden; record is disputed and inadequate for summary judgment—denied MillerCoors' motion on dilution and left for trial |
| Laches defense | Stone: filed within applicable 4‑year limitations period from accrual (2017 rebrand); laches inapplicable | MillerCoors: argued Stone unreasonably delayed enforcement | Court: Stone timely filed; strong presumption against laches; granted Stone summary judgment defeating MillerCoors' laches defense |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment burden principles)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment and genuine dispute standard)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft multi‑factor likelihood of confusion test)
- Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012) (trademark strength and use‑in‑commerce totality‑of‑circumstances approach)
- Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (9th Cir. 2010) (application of Sleekcraft factors)
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (mark strength and intent considerations)
- Brookfield Commc'ns, Inc. v. West Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999) (relatedness of goods and marketplace context)
- Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240 (9th Cir. 1984) (importance of packaging and house marks in similarity analysis)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (U.S. 2007) (declaratory judgment Article III justiciability standard)
- Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426 (9th Cir. 2017) (weighting Sleekcraft factors; not a tallying exercise)