Marble City Brewing Company Stalled by Trademark Lawsuit

Even before its beer hits the shelves, the Knoxville brewery must tangle with claims of infringement by New Mexico’s Marble Brewery

KEGS READY TO ROLL: Although Marble City Brewing Company founders Adam Palmer (left) and Johnathan Borsodi (flanking brew master Jennifer Muckerman) are ready to launch their new beer, they’ve hit a legal snag that’s preventing them from stocking local shelves and restaurants.

photo by Frank Carlson

KEGS READY TO ROLL: Although Marble City Brewing Company founders Adam Palmer (left) and Johnathan Borsodi (flanking brew master Jennifer Muckerman) are ready to launch their new beer, they’ve hit a legal snag that’s preventing them from stocking local shelves and restaurants.

Last Friday afternoon, a new craft beer hit the shelves of Bearden Beer Market.

Generally, this would be cause for celebration for Knoxville’s many beer snobs. Generally, you’d have a town excited to be just the third market for a beer.

Generally, you wouldn’t see Knoxvillians like Curtis McArthur making the following post on the brewery’s Facebook page: “I for one, will not be purchasing any Marble beer, and will encourage others to do the same.”

But those handful of $12 six-packs from New Mexico’s Marble Brewery on the Beer Market’s shelves (and soon elsewhere) are at the center of a controversy—one likely to delay the city’s only craft brewery from beginning its sales this month as planned.

The two men behind the local Marble City Brewing Company, Adam Palmer and Johnathan Borsodi, still seem in shock over the whole mess. In shock and really, really pissed off. Not because there’s a new beer in the Knoxville market, but because that brewery is suing them for trademark infringement.

“From a competitive standpoint, it doesn’t bother us one bit,” Palmer says.

“We’re always happy to see more craft beer in Knoxville,” Borsodi adds.

What the pair aren’t happy about is what they see as Marble Brewery’s strategic move into the Knoxville market in an attempt to claim damages from the lawsuit—a claim Marble denies.

Palmer and Borsodi say they came up with the name Marble City Brewing Company in October 2009, after Knoxville’s historic (and somewhat obscure) nickname from the days when the city produced a large amount of marble. They registered that name in April 2010.

Prior to registering as a corporation, the pair did research whether anyone else had the name. They discovered there was a Marble Brewery in Manchester, England, and a Marble Brewery in Albuquerque, N.M. Since the British beers didn’t seem to be available stateside, and since the New Mexico beers were only available in New Mexico and Arizona, and since neither had City in the name, Borsodi says he couldn’t imagine how there could be any confusion over similar-sounding names. Especially, he notes, because the Marble Brewery in Albuquerque is so named because it’s on Marble Street, and its logo uses images of glass marbles, the children’s toy, not the stone.

But in October, Borsodi received a call from Jeffery Jinnett informing him that the name Marble City Brewing Company was a problem. Jinnett is the president of Santa Fe Dining, which owns and operates a number of restaurants in Santa Fe and Albuquerque, N.M., including Marble Brewery, which is a brewpub that also sells its own beer. Borsodi says he explained that he couldn’t see any possible confusion that would arise between the two breweries and declined to change the name. In November, Marble Brewery filed a lawsuit in federal court.

The original complaint states, “Marble City’s unauthorized use of the Infringing Marks are likely to cause confusion of purchasers and the public in general.” That’s nonsense, says Borsodi. He asks if people confuse Samuel Smith and Samuel Adams, or if they mix up Lost Coast Brewery with Left Coast Brewery, and Left Coast Brewery with Left Hand Brewery.

Then there are the Paper City, Cigar City, Iron City, Watch City, River City, Capitol City, Golden City, Naked City, and Granite City breweries—the last of which, a chain based in Minnesota, has actually contacted Marble City about joint marketing concepts based on the two companies both having a rock in their names.

“They were like, let’s have some fun with that—throw a rock concert or something. That’s the craft beer industry,” Palmer says.

That’s apparently not how Marble Brewery sees the industry. Jinnett declined to comment on the lawsuit, citing company policy. But the complaint states that Marble City’s “acts of federal and common law trademark infringement are committed with the intent to cause confusion and mistake, and to deceive the public.” It also calls Marble City’s website domain, marblecitybeer.com, “confusingly similar” to Marble’s website, marblebrewery.com.

From a design standpoint, the two logos look nothing alike—Marble Brewery’s is brown and green, with black type; Marble City’s is red with cream type. The fonts are different, and there’s a marble on Marble’s logo. The websites also have nothing stylistically in common. And that’s why Borsodi, who’s also a lawyer, figured he had nothing to worry about.

“If we fought on the merits of the lawsuit, we would win,” Borsodi says.

When asked why they don’t just change their name and avoid the legal hassle altogether, Borsodi says they can’t afford to. They’ve spent thousands of dollars already on merchandise with their logo on it—glasses, signs, T-shirts, and other promotional items. And a new name would in itself create a legal hassle, requiring a new LLC filing, new permits, new paperwork.

“The only money going into this is our money, and we’re broke.” Borsodi says. “We’re not generating any money yet.”

Borsodi and Palmer were hoping to start generating money in a week or two—after months of getting everything in place, Marble City finally has all the permitting ready and the beer brewed. But now that Marble Brewery has beer on Knoxville shelves, Marble City can’t.

“If we aren’t selling beer, there are no damages,” Borsodi says. “As a lawyer, I have to say I’m impressed by the move.”

While he wouldn’t talk about the lawsuit, Jinnett would talk about Marble Brewery’s decision to hit the East Tennessee market—before even hitting any of the other states bordering New Mexico.

“Knoxville’s my hometown. I went to UT, and I still have a lot of friends in town,” Jinnet says. “It seemed like a natural progression for me personally to take the product to my hometown.”

Marble Brewery beers are being distributed locally by Chattanooga’s MOLO-TENN Distributors. Owner James Sherrell says he was unaware of the lawsuit and he first heard about Marble Brewery from a friend who lives in Albuquerque. Sherrell was also unaware that Marble has no distribution outside of the Southwest, as was MOLO-TENN salesman Jeff Nunes, who has been pushing Marble locally.

“I heard there was a conflict over the name, and that’s all I heard about,” Nunes says, but notes he was unaware a lawsuit had actually been filed.

Borsodi declined to say how much it would cost for Marble City to change its name.

“It’d be enough that it’s worth it to keep fighting, especially since we’ve done nothing wrong,” he says.

Still, Marble City hopes a resolution can be found before heading to court—and found soon, so they can start putting their brew in local restaurants and bars instead of having it sit in vats in their warehouse.

“We have beer ready to go. We have hundreds of empty kegs ready to be filled with beer,” Borsodi says.

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Comments » 10

creech37914#204390 writes:

Marble Brewery beer will be gone quickly if no one buys its beer. Sounds like a plan to me.

fixintheworld writes:

in response to creech37914#204390:

Marble Brewery beer will be gone quickly if no one buys its beer. Sounds like a plan to me.

I will say this, regardless of the lawsuit at hand, Marble Brewery's IPA is actually one of the best I've ever had...

fixintheworld writes:

Full Disclosure: I'm a New Mexican ex-pat and a huge fan of Marble Brewery. I think their beer is absolutely first rate. That said, I would love to see Marble City Brewery take off and bring high-quality craft brewing to Knoxville.

I actually had a very interesting encounter last evening at Knox Public House with Mr. Borsodi. While talking to the bartender, who overheard that I'm a homebrewer from a buddy and who subsequently asked if my beer was better than theirs [Knox Public House's], Mr. Borsody threw down a Marble City Brewery business card and declared loudly "But it's *not* better than my beer!" Quite the introduction!

We talked briefly at the bar about craft brew and he invited me out front with him to chat while he had a smoke. The conversation was not entirely pleasant and I probably was not as articulate as I would have liked. I feel that litigation is a disaster, and can really punish a small upstart company like Marble City. I really do feel for him and his.

The last thing a proprietor should do to win favor is to be rude to potential customers. Moreover he was extremely upset about a tasting conducted at the brewery several months back to which the local homebrew club was invited (apparently they weren't even though the entire club got the invite via listserv) and he wished they had not come.

Mr. Borsodi, the people you want to love your beer are home-brewers. We're an opinionated and obstinate collection of beer connoisseurs. You want us to love your beer because we will tell anyone and everyone around us that your beer is fantastic, that your brewery is cool, that your head brewer is a mad genius, and we will put money in your pocket. Even if you don't like us and find us annoying we're going to be a great marketing tool. Be cool to us.

So here's to hoping that Marble City Brewery and Marble Brewery (a taste of home so very far from the desert) can co-exist and happily quench our thirst side by side in coming months.

bluesandbarbq writes:

in response to fixintheworld:

I will say this, regardless of the lawsuit at hand, Marble Brewery's IPA is actually one of the best I've ever had...

Their IPA may be the best on the planet but it will never cross my lips. Karma will bite their a$$. Knoxville - do NOT buy MARBLE BREWERY beer. What a stunt. Poor and bitter taste...

herlpermonkey writes:

I wish Marble City the best of luck. But, I did have a similar encounter with Mr. Borsodi. I sent him an email as being a part of the homebrewing club in which we supposedly all had an invite and was rejected. He probably didn't like the homebrewer's showing after they had given honest feedback about the brews which were maybe not as good as he would have liked.

I hope he can prove that their beer is better than yours. I know some people in the club have more national awards for their beer than the two founders have ever seen. If I remember correctly, the home brew club's line was 3 times as long as as theirs at the Brewer's Jam.

Good Luck Marble City. I really would love to see a craft brewery thrive in Knoxville.

patrickbeeson writes:

Though I've recently moved away from Knoxville, I had the opportunity to meet the Marble City Brewing folks in addition to trying some pre-brewery samples of their beer.

It's a shame Marble Brewing had to resort to such tactics in order to control a loosely associated name.

I agree that the best way to voice disagreement with their effort is to not by their beer. Also, send them an email or give them a call and let them know their beer isn't welcome in Knoxville.

I don't care if they make the best IPA in the country; using bully tactics in this way is not appreciated amongst craft-beer lovers.

HonestAbe writes:

Amen to that.

This is a prime example of bully business tactics and the the work of a soulless individual. Which local attorney represented this "Knoxville native"?

I can assure you that Jinnett will not have any friends when he returns home to the proud Volunteer State. Hopefully justice will be served on these heartless cowards. This is a prime example of our legal system needing to be fixed, and more importantly, proof that there is indeed evil in this world.

HonestAbe writes:

More examples of breweries coast to coast operating peacefully:

Dogfish Head
Flying Dog
Laughing Dog
Sea Dog
Sleepy Dog
Thirsty Dog

- - - - - -

Lost Coast
Left Coast
North Coast
Pacific Coast
Central Coast
Coast Brewing

patrickbeeson writes:

Jeff of Marble Brewing sent me this "letter" after I e-mailed him about my disagreeing with his lawsuit: https://docs.google.com/viewer?a=v&am...

vuestramerced writes:

@patrickbeeson -- I'd say that "letter" makes a pretty straightforward and logical case for why Marble Brewery would seek to protect their trademark. It also complicates the public display of victimization I've seen on the MBC side. It may be hard for a denim snob to recognize economically rational behavior when one sees it. But there it is.

I am, of course, glad to hear that MBC and MB have come to some form of agreement. Here's hoping MBC can live up the standard of quality that Marble set for the name.

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