Heineken and several of its subsidiaries have dropped their trademark infringement complaint against Biscayne Bay Brewing and signed a covenant not to sue the Miami-based craft brewery.
“The parties have jointly agreed to resolve their trademark dispute,” a Heineken spokesperson told Brewbound. “Heineken is confident the remaining claims will be resolved in its favor.”
In a stipulation filed in the U.S. District Court Southern District of Florida on May 14, both parties agreed to the dismissal without prejudice of the three counts of trademark non-infringement Biscayne Bay brought against Heineken and subsidiaries La Tropical Holdings B.V. and Cerveceria La Tropical USA LLC in October.
However, not all of the issues between the two companies are not over.
At the center of the trademark dispute was Biscayne Bay’s Tropical Bay IPA, which the brewery has produced since 2018 and filed an application with the U.S. Patent and Trademark Office (USPTO) on February 8, 2020. Heineken countered that its subsidiary Cerveceria La Tropical claimed the use of the word “tropical” in the beer space.
The Dutch beer maker withdrew its opposition to Biscayne Bay’s USPTO application on May 13, and Biscayne Bay’s legal team expects the mark to be fully registered within two months.
“We were surprised,” Biscayne Bay’s attorney Alejandro Miyar told Brewbound. “It’s quite telling that they did so in our view, because it underscores that the trademark dispute, from the outset, had an anti-competitive purpose to stifle a small business and bully it into walking away from its fastest growing brand.
“We feel absolutely vindicated that they threw in the towel and are focused on vigorously prosecuting our unfair competition claims,” he continued.
Cerveceria La Tropical was a Cuban brewery dating back to the 1880s and brewed La Tropical beer. It ceased production in 2008, according to court documents. In the U.S., La Tropical Holdings registered the trademark in 1993 and refiled with updated logos in 2009 and 2019.
Rights to the brand La Tropical have changed hands several times: from original owner Iberia Beverages Inc. to Iberia Wines Corp. in 1996, to La Tropical Brewing Company LLC in 1998, to Three Palms Holdings LLC in 2001, and to defendant La Tropical Holdings in 2017.
“La Tropical beer has not been offered for sale or sold in the United States since the middle of 2016,” Miyar and co-counsel Geoffrey Lottenberg wrote in a letter to Heineken in June 2020. “Any purported trademark rights are, therefore, presumed to be abandoned as of 2019. Frankly, La Tropical beer is largely unknown to consumers either in South Florida or in the United States.”
Biscayne Bay is proceeding with its complaint that Heineken engaged in tortious interference in the craft brewery’s now-former sponsorship of Inter Miami, the city’s MLS team. Biscayne Bay signed an agreement to become the official craft beer of the team in February 2020, ahead of its inaugural season.
In September 2020, the team sent Biscayne Bay a termination agreement, which Biscayne Bay alleges was the result of Heineken having “repeatedly pressured Inter Miami and MLS to not perform their obligations to Biscayne Bay,” as Heineken has been the league’s official beer since 2014.
At the time of the termination, an Inter Miami employee told a brewery employee via email (included in Biscayne Bay’s complaint) that “Heineken and the league don’t want you roasting them in public is the bottom line.”
“We’re going to be proceeding with discovery, deposing Heineken’s employees involved in the interference of our client’s sponsorship of Inter Miami and moving forward towards trial on the tortious interference, unfair competition claim, and the violation of Florida’s Deceptive and Unfair Trade Practices Act,” Miyar said.