I am making this post to let you know we may need to change our club name. We have been contacted again by the Beer Nuts Company that they would like us to change our name. I will post the letter we received and my response. We do not plan to take legal action because frankly, we would lose. I have a team of many lawyers I work with and not any of them think we have a chance. Beer Nuts is a trademark owned by the Shirk family that operates the snack maker. It is not some huge publicly traded company. The person contacting us is related to the owners. It is a family owned business and they want to protect their brand which I understand. It is their bread and butter. Anybody can put some nuts in a bag. They have one 100,000 SF production facility in Bloomington, IL. I am going to speak with them later this week but I am guessing the outcome is we will need to abandon our use of Beer Nuts. I will keep you up dated on any changes here in the forum and at meetings.
We had a good run for over 10 years. This is not all bad. In life we are faced with many conflicts. The way I live is I like to find the opportunity that arises from these conflicts. It is not often an easy path, but there are opportunities to make the best of a bad situation. Should we need to change our name, we should have fun with it. I would like you to share your ideas for a new club name (lets avoid trademarks
). We could also do some Facebook posts and get ideas from the public. Maybe have people write a suggested name on a piece of paper and submit at our next happy hour in November. I will negotiate with Beer Nuts, Inc. that this cannot be a change that happens over night and we will reference our club in some postings as the Homebrew Club formerly know as the CR Beer Nuts in some fashion for a while. As long as we show progress towards a change I am sure we will be fine legal wise.With a new name, we will need a new logo. Hopefully some talented individuals in the club can help us out. This change will not happen overnight and I would like to make it a positive change. Lets do something cool and move forward. Changing our name should not change how awesome our group is.
We will do our best to convey the name change to the public including contacting our friends at the Gazette to let them know about our situation. I do not wish to appear to be wining about it, or pouting because we have to change our name. I would like to maintain a professional approach and just make sure people recognize we are changing our name and why. I do not wish to make this an us versus them, or portray the company as some big evil empire. I frankly sick of this immature approach to handling conflict that seems to exist everywhere you look these days.
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Here is the email exchange I have had so far:
Mr. Matthew Franklin
Cedar Rapids Beer Nuts
1102 30th Street Dr SE
Cedar Rapids, Iowa 52403
Re: Your Use of "Beer Nuts"
Dear Mr. Franklin:
I am writing to you on behalf of Beer Nuts, Inc. and Beer Nuts Legacy Corp. (collectively “Beer Nuts”), owner of the BEER NUTS® trademark.
Beer Nuts has been the sole manufacturer and distributor of BEER NUTS® Brand Snacks products for over sixty years. This includes our BEER NUTS Original Peanuts and other snack varieties, in addition to clothing and merchandise, all sold under the BEER NUTS name and mark. Please see
http://www.BEERNUTS.com for more information about our products and our history.
Beer Nuts' longstanding trademark rights to the BEER NUTS name and mark are reflected in part by its several U.S. trademark registrations, as shown in the attached chart. Details of Beer Nuts' registrations are available at http://www.uspto.gov, the website of the U.S. Patent and Trademark Office.
Over many years, and at substantial cost, Beer Nuts has built up a most valuable goodwill in its trademark. To protect this valuable asset, Beer Nuts must, under trademark law, take action against unauthorized uses of marks that may cause confusion. For example, in a well-known case, Beer Nuts was forced to bring a lawsuit to stop the use of BREW NUTS. Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920 (10th Cir. 1986).
It has come to Beer Nuts' attention that you are president of a group called "Cedar Rapids Beer Nuts."In addition to using the "Beer Nuts" name, you use a logo that simulates the Beer Nuts logo, as well as a slogan, "Good Times Great Beer," which borrows from the Beer Nuts slogan, "Good Times. Great
Nuts." This conduct is likely to cause confusion or to deceive consumers as to your affiliation, connection or association with Beer Nuts.
We must request that you stop such trademark use of "Beer Nuts" and adopt a different name and mark that is not confusingly similar. We would prefer to resolve this issue in a friendly manner that protects our interests and does not unduly impact yours and we would be happy to discuss those options.
Please contact me at your earliest convenience to discuss this matter. I can be reached at #312.371.0055 or cindy@BEERNUTS.com.
Sincerely,
Cindy Shirk
Brand Manager
BEER NUTS® Brand Snacks
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My Response:
Dear Cindy Shirk,
I received your letter requesting that the non-profit social club I am president of, adopt a different name from our Current “Cedar Rapids Beer Nuts Homebrew Club”. I must say, I am a little shocked by the request. A few years ago, we were contacted by a representative of your company, Patti Penn, Retail Supervisor, BEER NUTS Brand Snacks, on August 31, 2014. She had heard about our beer festival we organize to raise money for “Pints for Prostates”, which is a non-profit organization that raises money for prostate cancer research. She recognized the symbiotic relationship between our groups, and inquired on ways the BEER NUTS Brand Snacks company could participate. This was her message.
Hi,
I'm writing as our company is the original 61-year-old BEER NUTS Brand Snacks company. My guess is you didn't realize we own a trademark on the name BEER NUTS. Because of that we are notified whenever someone uses our name on social media. We spend a great deal of time and money each year protecting that. I am not writing to cause any problems for your group. As it turns out I am writing because we too support cancer research. If you look at our website you will find out Good Times. Great Nuts. boxer briefs where a portion of our proceeds is donated back towards testicular cancer research. Because of your event and your name I felt it was only fitting to reach out to you and offer a donation to be used. I'm not sure how the event works or how many people you expect but I would love further details so we could get involved if at all possible. It seems like a perfect Tie in for this company to help you raise some funds while having a good time with our products. I will not be in the office tomorrow but would be happy to talk to you sometime this week about possibilities and some things we can do. Let me know if you are interested in talking and a couple of times that will work well for you and I'll be happy to give you a call.
Keep up the great work...talk to you soon,
Patti Penn
Retail Supervisor
BEER NUTS Brand Snacks.
That is the main thing our club does. We are a group of approximately 40 homebrewers that meet once a month, to discuss our homebrew and work towards raising money for various charities. We pour our beer at events in our area to support charity and spread the word of good beer. We are very busy this week adding a new event to support breast cancer research that happens this Sunday. We sell no products, and certainly no food products at all, let alone compete in the snack or apparel business your company is in. We are a registered 501(c)(7) not-for-profit social club.
Similarities between our names is certainly obvious. I understand you have operated with the trademark for over sixty years as identified by yourself and Patti. We certainly do not want to infringe on your trademark and wish to bring no harm to your business. We have operated for over 10 years with our name, and your company has previously recognized our name and allowed its use to continue. I am not certain why the change is being requested now. I would guess you are not familiar with the past history of your company’s interaction with our non-profit fund-raising organization.
I certainly understand your need to defend your trademark. I personally work with a portfolio of over $14 billion of commercial real estate assets across the United States and understand the need to protect your brand rights. The case you identified in your message was between your company and another producer of similar snack products. In this case, it is difficult to see how we are confusing consumers in an adverse way that would harm your company like in that case. As fans of beer, we are certainly fans of BEER NUTS Brand Snacks. I hope you will consider the positives of us continuing to operate as the “Cedar Rapids Beer Nuts Homebrew Club” as you have in the past, and possibly participate in our largest annual fund raising event.
Please feel free to reach out to me via email mvfranklin@yahoo.com or my mobile phone 319.654.7710. I will get back to you as soon as I can.
Kind Regards,
Matthew Franklin
President
Cedar Rapids Beer Nuts Homebrew Club
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Last message:
Mr. Franklin,
Thank you for your email and for bringing to our attention your prior communications with Patti Penn. Please understand that Ms. Penn is no longer an employee of Beer Nuts, and she never had the authority to grant consent with respect to the Beer Nuts name and marks.
We do want to settle this issue in an amicable manner and would be interested in finding out more about potentially becoming a sponsor for the charitable cause once we do so.
Please note that Beer Nuts does not object to purely descriptive uses of “beer nuts” (i.e., to refer to people who are crazy about beer) that are not likely to cause confusion. We are solely interested in protecting the brand equity that you have noted. We are pleased that you like our products and are hopeful that we can find a resolution of this problem.
I look forward to speaking with you and to discussing an amicable resolution. Is there a good time for me to call?
Sincerely,
CINDY SHIRK | Brand Manager
BEER NUTS® Brand Snacks | 547 Evans Ct. | Basalt, CO 81621
cindy@BEERNUTS.com | # 312.371.0055 | Good Times. Great Nuts.
