-Martha Engel, Attorney

What happens when a clothing manufacturer starts selling graphic t-shirts and sweatshirts, perhaps without doing a proper trademark search?  Sometimes a lawsuit.

A trailblazing brewery when it comes to trademark disputes, Long Trail recently sued snowboard manufacturer and fellow Vermonter Burton for using TAKE A HIKE on shirts and sweatshirts.  Here’s an example of one of the offending sweatshirts:

Long Trail owns U.S. Trademark Registration 3,637,458 for TAKE A HIKE! for shirts, short-sleeved shirts, and sweatshirts as shown only here on their website.

Two days after Long Trail sued Burton, the parties apparently settled it with Burton agreeing to cease use of the mark on these products.

So would you be confused by Burton’s use, just looking at the examples above?   Does TAKE A HIKE! even function as a trademark?  Does it indicate the source of goods or services to you, or is it merely ornamental?  Should Burton have turned around and said “No, you take a hike!”?

Burton does not appear to be the only one using the phrase “Take a Hike” on a graphic element on a shirt.  Target, Saks Off 5th, and Macy’s websites all have shirts or sweatshirts currently available for purchase bearing TAKE A HIKE – including one from The North Face.  Then there’s Amazon, where a quick search reveals over 700 search results for “Take a Hike” apparel.  This seemingly pervasive third party use suggests that the mark may not be source identifying.

Federal registrations provide a statutory, but rebuttable, presumption of the owner’s exclusive rights in a mark.  Without their federal registration of TAKE A HIKE! here, Long Trail may have experienced a more grueling climb to establish its rights in the mark before it could convince Burton to turn around.

While breweries sell plenty of cool swag, few go through the process of filing federal trademark applications on apparel, glassware, or even key chains.  There are over 12,000 live applications and registrations for breweries on “beer,” but there are less than 800 live applications and registrations owned by breweries for apparel or glassware.  Even Long Trail did not file for their LONG TRAIL mark on many of their goods until last year.  If you are a brewery, you may want to consider filing on important goods to your business other than beer, especially on your house brand like LONG TRAIL, as part of an overall filing strategy.