Primo trademark disputed in court
Water company claims Primo trademark was abandoned after Stroh Brewery shut down
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There is only one Primo.
But whether it's a beer or water is the center of a court battle over the brand name on an iconic Hawaii brew set to relaunch on Oahu next week.
Primo Water Corp., headquartered in Winston-Salem, N.C., is defending its rights to the Primo name, which it has used since 2005, against Woodridge, Ill.-based Pabst Brewing Co., which owns Honolulu's Primo Brewing & Malting Co., the maker of Primo beer.
Pabst asked in two letters this fall that Primo Water stop using the name or face litigation in federal court. Primo Water is asking for the cancellation of the Primo Beer trademark registrations in a North Carolina district court filing submitted Thursday.
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A North Carolina water company is hoping its bottled water is thicker than Hawaii beer.
Primo Water Corp., headquartered in Winston-Salem, N.C., is challenging the Primo beer trademark of Woodridge, Ill.-based Pabst Brewing Co., which owns Honolulu's Primo Brewing & Malting Co.
Last month, Pabst announced plans to reintroduce the beer next week in up to 40 Oahu restaurants and bars, and in bottles this spring.
Primo Water requested that the U.S. District Court in North Carolina order the cancellation of Primo beer trademark registrations and rule that Primo Water's use of the name does not infringe on Pabst's claims to the Primo beer trademarks or weaken the beer's brand.
Pabst asked in a Sept. 7 cease-and-desist letter to Primo Water that the company stop using the Primo trademark on bottled water, according to a filing submitted Thursday by Primo Water. Pabst warned in an Oct. 31 letter to Primo Water that it "is prepared to litigate" before federal courts.
"We are working to protect our trademarks," Pabst spokesman Sanjiv Gajiwala said in an interview. "We don't think it will have any impact in Hawaii. Our trademark as far as the name is well established."
He declined to comment further. Primo Water, which works with more than 30 bottlers nationwide and at 60 distribution sites, did not return repeated calls to its North Carolina offices for comment.
Primo Water argues in the filing that the Primo beer trademark filed with the U.S. Patent and Trademark Office bearing the Hawaii State seal is not famous, calling it a "weak trademark." The company claimed that Pabst has not made use of the trademark since purchasing Detroit-based Stroh Brewery Co., former owner of the Primo brand, in 1999. It also said Pabst is not aware of any customer confusion caused by Primo Water using the name.
In addition, Primo Water said when Stroh shut down it didn't intend to resume use of the Primo name, rendering the trademark "abandoned."
"The existence of the Primo beer registrations has caused and will continue to cause damage to Primo Water by casting a cloud over Primo Water's existing trademark rights," the company said in the filing.
Primo beer started production in 1898 until Prohibition under the name Honolulu Brewing & Malting Co. Renamed Hawaii Brewing Co., it resumed making Primo in 1934 until closing in 1979. Stroh acquired the Primo brand in 1982 and tried to improve the formula. The company gave the brew a new look that included a replica of the beer's 1904 label. Falling sales led Stroh to stop brewing Primo in Nov. 1998.