More Inside Hershey’s Trademark Dispute with Side Lot Brewery
As reported by CBS Chicago’s (WBBM) Marie Saavedra, Side Lot Brewery in Wauconda, IL (Chicago’s Northwest Suburbs) must pay The Hershey Company $8,500 by January 4th because of its Sugar Series beer release this past Halloween comprised of Hershey’s candies and the associated labeling that mimicked Hershey products. We spoke to the parties involved about the trademark dispute.
Phil Castello, Managing Partner & Brewmaster at Side Lot Brewery, explained, “We didn’t realize the way we were using the candy and their names would be considered infringement. The candies were just one of several ingredients that made up the beers. We used the names and photos the same way we would the name of a patented hop or the brand of vodka we use to make a signature cocktail.”
Though the brewery has produced similar beers for three years, the brewery decided to can the beers this year because of the COVID-19 restrictions, which has forced every brewery to explore a multitude of to-go options to stay afloat. When WBBM reached out to Hershey, their spokesman said he understood “the appeal of using the company’s popular products as tie-ins. But…the way Side Lot Brewery went about it was not the way to do it.”
Castello and Side Lot attempted to fix the issue immediately but to no avail. “We did get a cease and desist letter. We complied with all of their requests immediately. The letter said that if we met their demands, they would not pursue the issue any further.” He explained that he asked Hershey representatives questions to make sure he had met all of their demands to rectify the incident. They responded by thanking him and telling him, “That works,” according to Castello.
Thus, Castello felt the two parties had an understanding and the matter had been resolved. Nevertheless, two weeks later, Hershey sent Side Lot a letter demanding the brewery pay a settlement – pay Hershey’s $8,500 by January 4. When interviewed by WBBM, Castello explained that he told Hershey: “Right now, I can’t. I can’t write you a check for $8,500,” He added, “It baffles me that this, we would be a target.”
We asked Hershey why they decided to pursue the matter further (demanding payment), and if they worried about appearing like a bully, notably during a pandemic when small businesses are hurting.
Jeff Beckman, director of corporate communications at Hershey, responded with a statement: “Hershey is proud of the popularity and goodwill that are associated with our iconic brands. We work very hard to ensure that our consumers get the quality they expect when purchasing our products. We certainly understand the interest that other companies have in wanting to participate in the appeal of our popular candy brands, but using our trademarks and trade dress without permission is simply not the way to do it. We expect that all businesses, big or small, national or local, will abide by the rights afforded to trademark owners. Trademark protections create a fair playing field for everyone.”
He also remarked, “These same laws protect this brewer from having another brewery open down the street using the same business name.” Trademark disputes in the craft beer industry are nothing new; in July we published “Stone Brewing Disputes Trademarks with Kentucky Brewery & 100 Other Brands.”
He added, “Beyond this, since we are still in discussions with the brewery owner about a settlement for the trademark infringement, we cannot comment on those aspects until the matter is fully settled.” When attempting to follow-up with Castello, he also declined to comment further.
In the meantime, an attempt to help Side Lot did emerge with the creation of a GoFundMe page by its patrons. However, Side Lot requested to its creator that it be taken down. “I truly appreciated the gesture,” said Castello. “I felt that this time of year, there are plenty of others that could better benefit from donations. We’re one of the few places locally that has an outdoor space to use, and we feel lucky that we can still be open and working. The best way to help and support Side Lot is by drinking local.”
Castello added: “If people were looking to make donations, they should redirect those donations to the Wauconda Island Lake Food Pantry.”
Feature image provided by Side Lot Brewing via social media.