IP Law Daily, TRADEMARK NEWS: Maker of LA TROPICAL beer alleges competitor’s PALMA beer misleads consumers, (Nov 17, 2023)

By Patricia K. Ruiz, J.D.

The complaint alleges Soltura misleads consumers into believing that its beer, made in Nicaragua, is actually produced in Cuba.

Lagunitas Brewing Company d/b/a Cerveceria La Tropical and La Tropical Holdings B.V. filed suit against Soltura, LLC, d/b/a Bucanero USA for false advertising, deceptive trade practices, copyright infringement, a declaratory judgment of non-infringement, and other claims for relief. The complaint alleges that, through Soltura’s use a label design mimicking the plaintiff’s, including use of its federally registered logo, Soltura has been and is continuing to willfully mislead and deceive the consuming public as to the source or origin of its PALMA beer (Lagunitas Brewing Co. v. Soltura, LLC, field November 13, 2023).

History of TOPI CRYSTAL beer. Cuba’s oldest brewery, Cerveceria La Tropical, was established in 1888. The brewery produced a beer under the name La Tropical and introduced in 1920 a lighter version of La Tropical branded as Cristal, which, over the ensuing decades, became Cuba’s most popular beer. At its height, according to the complaint, the brewery accounted for more than 60% of all beer production in Cuba. In the 1960s, the assets of the brewery’s owners were illegally confiscated and nationalized in the Cuban revolution, forcing the families to flee and resettle in Miami, Florida.

In 1998, two descendants of the families began brewing and selling La Tropical beer in Miami and formed Three Palms Holdings, LLC, which held the U.S. rights with respect to the Cristal beer trade dress. The assets of Three Palms Holdings were acquired by the Heineken Group in 2017. In 2018, construction began on a the new La Tropical Miami brewery and tap room. Recently, Tropi Crystal beer was launched, bearing the La Tropical house mark and paying homage to its original Cristal beer and its trade dress. The beer launched and is advertised and currently only sold in South Florida. The TROPI CRYSTAL label incorporates a design element—the three palms logo—for which La Tropical owns a federal copyright registration.

PALMA beer. Soltura produces and sells a beer under the name PALMA, which, like TROPI CRYSTAL beer, is targeted at the Cuban American community in South Florida. The PALMA beer bears a label design that mimics in virtually every detail the label design used for the CRISTAL beer that is currently brewed in Cuba and was illegally confiscated by the Castro regime. Soltura uses and prominently displays on the PALMA beer label and in point-of-sale displays the slogan “La Preferida de CUBA.”

Contrary to the messaging conveyed by its packaging, the complaint states, PALMA beer is produced in Nicaragua, not Cuba. The use of the Cuban Cristal label design and the label’s slogan has resulted in widespread confusion among members of the Cuban American community in South Florida, who erroneously believe PALMA beer is brewed in Cuba and is being imported into the U.S. in violation of the embargo against Cuba. The complaint alleges Soltura has been and is continuing to willfully mislead and deceive the consuming public as to the source or origin of its PALMA beer. The complaint further alleges that, by displaying the image of a palm tree within an oval on the PALMA beer label, Soltura is infringing upon the registered copyright in the three palms logo.

The complaint asserts claims for (1) declaratory judgment of non-infringement of Soltura’s claimed trademark and trade dress for its PALMA beer; (2) false advertising under Section 43(a) of the Lanham Act; (3) copyright infringement under the Copyright Act; (4) violation of the Florida Deceptive and Unfair Trade Practices Act; and (5) for cancellation of Soltura’s federal trademark registration for the PALMA & Design mark.

The case is No. 1:23-cv-24350.

Attorneys: James Evans Gillenwater (Greenberg Traurig LP) for Lagunitas Brewing Co. and LA Tropical Holdings B.V.

Companies: Lagunitas Brewing Company d/b/a Cerveceria La Tropical and La Tropical Holdings B.V.; Soltura, LLC, d/b/a Bucanero USA

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