## Facts

- Genesee Brewing Company marketed “JW Dundee’s Honey Brown Lager” beginning in January 1994 and emphasized “Honey Brown” in labeling and promotions; retailers and consumers often used “Honey Brown” to refer to Genesee’s beer.
- Stroh Brewing Company introduced “Red River Valley Honey Brown Ale” in early 1996 and likewise featured “Honey Brown” prominently on labels and in advertising.
- Stroh targeted Genesee’s customer base, including marketing directed to purchasers of Genesee’s beer and efforts that resulted in some accounts switching to Stroh’s “Honey Brown” ale.
- Genesee sued in federal court under Lanham Act § 43(a) and related unfair competition theories, and sought a preliminary injunction preventing Stroh from using the words “Honey Brown.”
- The district court denied preliminary injunctive relief, concluding “Honey Brown” was generic and that Genesee had not shown a sufficient basis for the requested unfair competition injunction.
- Genesee appealed the denial of the preliminary injunction.

## Issues

1. Whether “Honey Brown,” when used on Stroh’s honey brown ale, is generic (and therefore not protectable) for purposes of a Lanham Act § 43(a) claim seeking to stop Stroh’s use.
2. Whether Genesee could obtain a preliminary injunction on unfair competition grounds that would bar Stroh’s use of “Honey Brown,” despite the term’s generic character as used on Stroh’s product.

## Decision

- The Second Circuit affirmed the order denying the preliminary injunction.
- The court held that “Honey Brown” is generic as applied to ales that are brown ales brewed with honey because competitors need those words to describe that product type.
- The court declined to decide whether “Honey Brown” might be non-generic as applied to Genesee’s lager, because the requested injunction would still improperly prevent Stroh from using a generic term for its ale.
- The court recognized that a plaintiff may sometimes pursue unfair competition theories even when a term is generic, but ruled that the specific preliminary relief sought—prohibiting Stroh’s use of “Honey Brown”—was not permissible on this record.

## Legal Principles

- Generic terms—terms needed to name or describe a product type—are not protectable as trademarks and cannot be monopolized through Lanham Act § 43(a).
- When a producer introduces a product differing from an established product class by a particular characteristic, trademark law does not grant exclusive rights in the descriptive words necessary to identify that characteristic for competing products.
- Genericness is assessed in relation to the relevant product category; the same words may have different trademark significance depending on the product context.
- Even if confusion evidence exists, a preliminary injunction cannot properly award exclusivity over a generic term; unfair competition relief, if available, must be tailored to avoid depriving competitors of necessary descriptive language.

## Conclusion

The Second Circuit affirmed denial of a preliminary injunction because “Honey Brown” is generic for a honey-added brown ale and competitors must remain free to use necessary descriptive terms; any unfair competition remedy could not take the form of barring Stroh’s use of the generic phrase.


Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997)