Bethany Krajelis Jan. 28, 2014, 4:37pm

A battle between two breweries bearing the same name has landed in Chicago’s federal court.

Illinois-based Rockford Brewing Company Inc. (RBC-Illinois) filed a complaint for declaratory judgment earlier this month against Michigan-based Rockford Brewing Company Inc. (RBC-Michigan), asking a judge to resolve the trademark dispute.

Both businesses operate breweries in towns called Rockford in their respective states and neither wants to change its name.

According to the Jan. 13 complaint, counsel for RBC-Michigan sent RBC-Illinois a November 2013 letter demanding it cease and desist its use of the term "Rockford Brewing Company."

The letter states the Michigan business “has the legal right to the exclusive use of Rockford Brewing Company in connection with beer and restaurant and bar services” and would be prepared to take legal action if RBC-Illinois didn’t change its name.

RBC-Illinois asserts in its complaint it “does not wish or plan to change its name and believes its use of ‘Rockford Brewing Company’ does not infringe any protectable interest or right of RBC-Michigan.”

It further claims that if anyone should have to change its name, it is RBC-Michigan.

RBC-Illinois alleges the Michigan business' use of the term “Rockford Brewing Company” occurred no earlier than 2012, while it “traces its commercial ancestry to 1849, when an English immigrant named John Peacock opened the ‘Rockford Brewery’ on the shore of the Rock River in Rockford, Illinois.”

The Illinois business goes on to give a bit of history lesson in its complaint, which states that by the turn of the 19th Century, an immigrant named John V. Petritz took control of the company and built a five-story factory on the site.

He named it “Rockford Brewing Company,” RBC-Illinois contends, referencing an exhibit attached to its complaint of a 1904 advertisement featuring the name at the crux of the dispute.

Loyd and Diane Koch bought the building in 2000, according to the complaint, and the developed a mixed-used property on the premises known as Prairie State Brewhouse, which includes offices, loft apartments, a brewery, event space and a marina.

“At all times during the development, the history of the site --including its history as the ‘Rockford Brewing Company’ -- has been touted,” RBC-Illinois asserts.

RBC-Illinois states it believes the Michigan brewery’s use of “Rockford Brewing Company” didn’t start until at least 2012 and apart from the design it uses as its logo, “has disclaimed any rights to the exclusive use of the words ‘Rockford,’ “Brewing’ and ‘Company.”

The Michigan brewery, however, claims otherwise in a statement posted on its website earlier this week that provides some insight into its own history.

"When we decided to open a brewery in our town of Rockford (MI), we wanted our community to feel a sense of pride in having us. We wanted a name that would resonate that pride. Naming it Rockford Brewing Company made good sense," the post states.

It continues, "We did our research and with the help of our attorney felt that the name was not being used nor did anyone own it. We established Rockford Brewing Company in early 2011 and began promoting our new company at that time."

"We have worked very hard for the past 3 years growing our brand and establishing our name, not just locally but throughout the United States," the Michigan business states on its website. "Had somebody already been using the name in one of the other Rockford cities in the U.S, we certainly wouldn’t have proceeded with it."

The Illinois brewery, however, asserts its “rights in and to the use of ‘Rockford Brewing Company’ are superior to RBC-Michigan's rights” and that the Michigan brewery does not have the right to the exclusive use of the term at issue.

In its complaint for declaratory judgment, RBC-Illinois is asking Chicago’s federal court to declare it isn’t infringing on any enforceable trademark right of RBC-Michigan and it doesn’t need to change its name.

On top of reasonable attorneys' fees, the Illinois brewery wants the court to issue a finding that its rights are superior to those of the Michigan business and that RBC-Michigan doesn’t have any legal right to the exclusive use of the term.

RBC-Illinois is being represented by Wisconsin attorneys David G. Hanson and Jennifer L. Naeger.

Electronic court records show RBC-Michigan has until Feb. 7 to file an answer to the complaint and both parties have to submit a joint status report by Feb. 21.

An initial status conference in the case has been scheduled for Feb. 27 before U.S. District Judge Iain D. Johnston.

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