What’s In a Name? A Frustrating Trademark Story

by | Jul 29, 2021

On Canada Day weekend, my sister asked my wife and I about the new “Prairie Dog Food Truck” that she’d read about online. This was a bit of a surprise, since we didn’t have a new food truck. Sure enough, she pulled up the Instagram account and webpage for a new food truck called “Prairie Dogs” or “Prairie Dogz” depending on whether you look at social or their website/logos. I was shocked because not only was this an Alberta food business, rather than something far afield, but it had a logo reminiscent of our own, and even similarly named menu items. This food truck business echoed so much of our brand identity that my own sister thought it was ours.

All of the sudden, recent comments from customers, some of whom told me that they’d had our hot dogs or seen our food truck, started making sense. Unfortunately I had not been able to dig into those comments because I was in the middle of helping our service team during our busy reopening period. Instantly, I realized that this food truck was already being confused with us in our local market. It was very difficult to enjoy the rest of that weekend, the first one we had away from our business in a very long time due to being a startup restaurant and brewery working its way through the COVID-19 pandemic, but I held out hope that if we contacted the owner of the food truck right away, they’d immediately understand their mistake, publicly clear up confusion and change the name as soon as possible rather than allowing it to drag on while they continued to build a brand identity that they’d ultimately have to walk away from.

Building the Prairie Dog® Brand

The team all signing the beer planning table at its new home in our brewery space.

A brand name is the ultimate distillation of a business or product’s identity, and if business leaders do a good job of fostering a culture that reflects their values and vision, their brand(s) will ultimately become synonymous with that identity, capturing all of the emotions and sentimentality people feel toward it in just a couple of words. Naming our future business was something my cofounders and I took very seriously.

After spending about a year brainstorming and discussing names in 2015 and early 2016, we had firmly landed on “Prairie Dog”. The name was perfect for us because we already identified so much with these animals, for their grounding to the prairies, their basis for local ecosystems, their humble, fun and communicative nature, the way they build “dog town” communities and warn each other of danger, how the black-tailed prairie dog’s near extinction and rebound parallels the craft beer story, and the way everyone who grew up on or around the prairies has their own childhood memories and sentiments about prairie dogs, ground squirrels, gophers and other squirrel-like rodents (myself included).

We knew the name was right for us, but before cementing it into our business name, we spent months doing the diligence to ensure that “Prairie Dog” would indeed be ours. We scoured the internet for references to prairie dogs and for businesses named after them. We paid for NUANS searches spanning all of Canada to ensure that our name could operate country wide, planning for the eventuality of packaging and selling products inter-provincially, including considering the possibility of one day opening brewpub locations or operating food trucks in key cities across the country.

The Prairie Dog Brewing team serves up delicious barbecue and craft beer at the Calgary International Beerfest in May, 2018.

The Prairie Dog Brewing team serves up delicious barbecue and craft beer at the Calgary International Beerfest in May, 2018.

Food trucks and mobile barbecue setups have always been of interest to us. In fact, one of the kitchen concepts we seriously contemplated for our 58th Avenue Calgary brewpub was a food truck parked indoors, which we thought we could use for the first while as our primary kitchen, then make mobile again after eventually building out our full kitchen. In the end, cooking capacity, health code and building/fire code concerns prevented that from happening.

After confirming that the coast was clear and there were no businesses currently operating in Canada with our intended name and providing the same services, we federally incorporated in May 2016 as “Prairie Dog Brewing CANADA Inc.”:, rather than simply incorporating in Alberta. This was a move specifically designed to prepare us for eventual inter-provincial business, and to signal to anyone in Canada looking to use a similar name that they should take the time to do extra diligence, or risk a conflict. We then also registered with Alberta Registries as an extra-provincial corporation, which should have served as a strong signal to Alberta Registry agents that they should be warning registrants about potential conflicts.

Why didn’t we include “BBQ”, “brewpub”, or “restaurant” in our business name? Simple, we plan to eventually distribute cans and/or bottles of Prairie Dog® beer and other beverage products into the larger Canadian market, and if we don’t have a brewpub in those locations, talking about one on our cans would be confusing and possibly even detract from the customer perception of the product. With this goal in mind, we deliberately modelled ourselves after many of our favourite (and successful) brewpubs in the United States, like Russian River Brewing in California, Deschutes Brewery in Oregon, and dozens of others who started out as brewpubs, but are now synonymous with their beer products, internationally.

Registered Trademark ®

Although registering a corporation name should be enough to defend our brand in most cases, we knew right from the start that the brewing industry has been especially plagued by naming conflicts and trademark battles, so in July of 2016, 23 months before we opened, we filed for a federal trademark for the phrase “Prairie Dog” as applied to a number of goods and services that we expected to one day provide. This process took three years, with additional diligence by both our lawyers and the federal government, and cost our small startup roughly $10,000. After a lengthy property search and construction process, we began operating publicly in the summer of 2018, while we were still waiting for a fully registered trademark, which was provisionally approved later that year, but not yet official.

Prairie Dog® Brewing crest-style logo featuring mascot Alby on an orange background. Prairie Dog is a registered trademark of Prairie Dog Brewing CANADA Inc. Prairie Dog® Brewing crest-style logo featuring mascot Alby on an orange background. Prairie Dog is a registered trademark of Prairie Dog Brewing CANADA Inc.

We were finally granted a Canada-wide federal trademark, TMA1,025,291, in the spring of 2019 for the phrase “Prairie Dog”. That trademark includes “Restaurant services”, which is a blanket category in the trademark act that includes all manner of food service (there is no other category for food trucks to fall into). Along with the trademark, our intellectual property lawyers made it quite clear that we need to defend our trademark for it to be worth anything, something that we’ve since actively done in the background, such as by updating all of our marketing collateral to include the registered trademark symbol, maintaining control over the usage of our brand in third party marketing situations, and even occasionally requesting that third parties cease and desist the use of the name without our permission.

Building Brand Awareness

By mid 2016, two full years before we opened our doors to the public, we’d already invested over a year into name diligence and preparing to use that name across Canada, putting everything in place that we could think of to ensure that our name was safe to use, and to ensure that any person, whether they be in Moncton, Prince Albert or Prince George, could easily determine that “Prairie Dog” is in use and have ample opportunity to do the necessary diligence if they wanted to use the phrase “Prairie Dog” in Canada.

Prairie Dog Brewing's prairie-themed grain elevator tap tower, at their centre bar island, 58th Avenue Calgary brewpub.

Our Alberta prairie-themed centre bar grain elevator tap tower, handmade by our founding team.

Over the past four years, we’ve worked hard to ensure that Prairie Dog became known for bringing the community together in a fun way, for showcasing the incredible agricultural products the prairies have to offer through our beer, barbecue and other product offerings and services, for our old-school prairie grit and strong will, and for our honest and direct communication. We’ve made a lot of hard decisions and continue to strive every day to prove that the way incumbents are running other tip-based hospitality businesses – especially the way many are dishonestly taking advantage of their staff and customers – is outdated and unsustainable, and that it needs to be replaced with something far more virtuous and good for people and our planet, so we especially aim to ensure that Prairie Dog is associated with sentiments about that (whether positive or negative, depending on from who’s perspective). We have become known for our inclusive stance, particularly the way we support women in the beer and restaurant industries, non-gendered roles, the LGBTQ+ community, barrier-free access, and those with severe food allergies. We allow for – and actually expect – that our team members will occasionally make mistakes, sometimes major ones, but one of the fastest ways a person can end their Prairie Dog Brewing employment is to deliberately undermine our brand identity.

Prairie Dog Brewing founder Laura Coles rides a small steam roller in our parking lot for the

Prairie Dog Brewing founder Laura Coles rides a small steam roller in our parking lot for the “What a RELIEF Steamroller Printmaking Event” for Alberta Culture Days.

So as you can imagine, it is a big problem for us to see our Prairie Dog® name identified with any business that may undermine our values or that fails to help us achieve our mission and vision, which is why we strive so hard to ensure that our Prairie Dog name is not used without our consent. So far, in the case of the food truck business owner, we haven’t seen a great deal of consideration for other Alberta businesses, accountability for their mistakes, communication, or cooperation, traits that are important to the Prairie Dog brand identity. Therefore, they will confuse people and dilute the sentiment toward our brand, mixing it up with whatever other emotions their business decisions invoke in people, which are totally outside our control.

We think it’s entirely fair for us to believe that after all of the effort we put into establishing the Prairie Dog® brand, there is no legitimate reason that a person should miss that we are involved in food services or have a trademark for “Prairie Dog”, and we are 100% resolved to ensure that our brand identity is not stolen from us, diluted or otherwise defamed by a third party, regardless of the cost or effort involved.

Next Steps Against Infringement

First, let’s be clear that right from the get-go, ownership of the “Prairie Dog” trademark should entitle Prairie Dog® Brewing and our legal representation to recover all losses and damages resulting from this infringement (and the resulting dispute). Further, we are entitled to the proceeds gained through the unauthorized use of our trademark, the legal fees incurred in defending the use of the trademark, and to any digital properties associated with our trademark, like the food truck’s domain name. These are our rights, but we did not want to have to exercise them, especially against another small Alberta business.

Attempt at Cooperation

On the Monday after Canada Day weekend (July 5), we reached out directly to the owner of the food truck and informed them of this serious infringement using the email address publicly listed on their website. We outlined the confusion their use of our name was already causing and asked that they cease and desist the public use of the “Prairie Dog” phrase, giving them two days to respond to us before we would reach out to our legal team. We offered to assist with rebranding by using our own social media following and brand identity to help drive awareness to the new food truck brand, allowing us to tell a story of two small businesses cooperating rather than engaging in a legal battle that wastes our time and resources, and does no good for anybody except the lawyers.

We received no response whatsoever (to this day, several weeks later).

Be Honest and Transparent

To let our following know that this was not our food truck and alleviate confusion, we published a very respectful social media post on Facebook and Instagram, which did not even provide the name of the food truck business or it’s social media handles, and did not accuse them of any deliberate wrongdoing. However, we were met on Facebook with some hostile, ignorant comments from folks who got defensive, claiming that we were publicly bashing the food truck business and its owners, and who either hate Calgary for some reason or frustratingly assumed that we failed to do our diligence in registering our business name or trademarking it, and calling us fools for it. Thankfully, some of our online supporters directly responded to these comments rather than my wife, Laura, having to go it alone (thank you to those people, we really appreciate your support!).

When All Else Fails, Be Forceful

After receiving no response to our email by July 7th, we contacted our intellectual property lawyers and asked them to try to find the business owner and directly send them a cease and desist order. The lawyers found the identity of the food truck owner in the Alberta business registry and sent them a cease and desist order by registered mail. To date, our legal team have received no response to that cease and desist order, nor have we, directly.

Therefore, it started to look like the food truck owner had made a conscious decision to fail to comply with our requests and continue operating under our name, compelling us to keep defending our trademark by legal means, and our legal team contacting the companies that host the food truck’s social media handles and website. The first social media account was taken down on Monday, July 26, and others will follow.

After the first social media account takedown, we observed on social media that the food truck company was aware of why we were taking down their infringing  social media accounts, but they trivialized our efforts and publicly disregarded our trademark rights, further defaming the Prairie Dog brand in the process.

It appears that sometime in the past 24 hours, the website for the food truck was also taken down by a cease and desist order.

You might think that we would be overjoyed to see these social media pages and the website come down, but the emotion is one of a sad frustration – frustration that another Alberta small business owner would fail to simply acknowledge that this was their mistake straight away, and take personal responsibility and accountability to get it fixed right away. We are especially supportive of local business in Alberta, going very out of our way to forge healthy partnerships with other Alberta-owned businesses, and it saddens us deeply that this company would rather spend their time in what could be a business-ending battle instead of rebranding for success. There seems to be animosity towards us for simply trying to protect the Prairie Dog® identity, which we spent years building and giving literally everything we had in order to found, operate, and to enable us to survive a worldwide pandemic that shut us down for nearly a year.

What Are We Really Asking For?

When we first tried to reach out to the owner of the food truck business, it had only been registered for about 7 weeks (registered on May 12, 2021). The typical brand-related startup costs for a new Alberta sole proprietorship or partnership with a logo and a basic website might run between about $1,500 and $5,000, including vinyl or painted signage on a food truck and some marketing collateral (eg. flyers, business cards). At this early stage of business, when there are not already a thousand references to the business name on third party publications, piles of branded merchandise sitting in a warehouse, legal agreements in the business’s name, etc., renaming can be done quickly and usually for less than the initial startup cost. The longer a business owner waits to rename, the more expensive and time consuming it is to do so. So we are asking the owner of the food truck business to cease operations under our name, choose a different one (carefully) and rebrand as soon as possible so that both businesses can coexist and thrive in the same markets.

We have to add that in the short time between when the food truck owner registered the business and when we notified them of the infringement of our trademark/name, they had done a spectacular job of creatively marketing and developing a brand, as demonstrated by our guests and families being confused about the food truck in the first place. Those costs are unfortunately unrecoverable, but not totally lost. Google, Facebook, Instagram and other online traffic sources support renaming quite easily (if they didn’t, companies would never merge or rebrand these days – in fact we renamed our own social media handles early on in our business, and we’re preparing to change our web domain name shortly for unrelated reasons). If the food truck owner was so successful with that first marketing push, odds are that they would be with a second one, too, especially if they had the aid of the free marketing and additional exposure they would have gained through cooperation with our initial request (sorry, that ship has sailed after the anguish this has put us through).

Now that we’ve had to rack up thousands in legal fees to try to regain full control over our identity, we expect to have those fees covered by the food truck business owner, including any other legal fees associated with settling the infringement case. As time goes on and we observe further market confusion or damage to our brand as a result of this infringement, those damages may also be added to the amount we seek to settle this case.

What we haven’t discussed yet are the days we’ve already lost while trying to rectify this problem instead of building our business at this critical post-COVID-19 juncture, including the days that it took to write, validate and publish online posts to try to get out in front of any negative publicity that can arise from this situation, and the time it will take to respond to the subsequent community feedback about it. Who knows what kind of harm may come to our reputation as a result of trying to defend ourselves from what ultimately amounts to identity theft, something that folks might be more concerned about if their own identity had been stolen and used for unauthorized purposes.

So we are asking the owner of the food truck business to take responsibility for this mistake and work to correct it as soon as possible instead of trying to spin this as some sort of city vs country battle. The reality is that we probably have a lot in common. We are all small food business owners in southern AB. We all seem to share a passion for prairie communities and serving up great food, but only one of us completed the necessary diligence before we named our business, and only one of us may have benefited by taking on the brand identity of another well-established Alberta business, whether deliberately or by simple accident. Alberta businesses shouldn’t have to fight each other, except maybe in friendly competition.

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