In his first ruling in the case, a judge has determined that patrons are unlikely to be confused between the exclusive Castle Pines Golf Club and an upcoming restaurant nearby that shares a hummingbird theme.
Judge Kato Crews’ decision on Dec. 23 is a win for Mark and Jo Brinkerhoff, a married couple who had been told by Castle Pines to cease and desist using hummingbird insignia as they spend an estimated $14 million on a steakhouse and cocktail lounge in Castle Rock.
“Because there is little likelihood of confusion, the harm Brinkerhoff (Restaurants) would suffer if it was forced to cease using its trademark and rebrand its entire concept outweighs any potential harm to Castle Pines,” Crews wrote in denying to issue an injunction.
The couple’s restaurant will be named The Brinkerhoff, an homage to Mark’s family and its legacy of popular restaurants in the Denver area, including La Loma. The lounge is to be called Bar Hummingbird, an homage to Jo’s Mexican heritage, to which the hovering little birds are important, as well as Castle Rock’s location within hummingbird migration paths.
That doesn’t sit well with Castle Pines Golf Club, whose trademarked logo of two hummingbirds in flight is ubiquitous around the golf course. The club believes the Brinkerhoffs are intentionally infringing on that hummingbird trademark in an attempt to trick its future customers into believing that Bar Hummingbird is affiliated with the posh country club.
After receiving cease-and-desist letters from the club, the Brinkerhoffs sued Castle Pines on July 15 in an attempt to resolve their dispute before Bar Hummingbird opens. Castle Pines responded by asking Crews for the injunction and complained that the Brinkerhoff tiff was distracting the club from its PGA BMW Championship in late August.
During a hearing in his courtroom on Oct. 11, Crews came to agree with the Brinkerhoffs. He said that Jo Brinkerhoff “credibly testified” that Bar Hummingbird’s name is “based on the spiritual significance of the hummingbird to her Mexican heritage” and was not an attempt to piggyback on the reputation of Castle Pines or infringe on that club’s trademarks.
“Given the significant barriers to entry and the lack of marketing regarding Castle Pines’ bar and restaurant services, even if the public uses a low degree of care in selecting a bar and dining establishment, it is unlikely they would associate Bar Hummingbird with Castle Pines’ exclusive golf course, club and other offerings,” the judge explained in a 17-page ruling.
“Likewise, to the extent any Castle Pines members or guests might also visit Bar Hummingbird, their knowledge of the club’s exclusivity suggests any confusion would be nil.”
While the judge acknowledged that hummingbird logos are commonplace at Castle Pines, he determined that Bar Hummingbird’s logo is a different species of hummingbird from the golf course’s logo. He notes, “The Americas are home to 366 hummingbird species.”
Crews cited a 2003 case in which Kellogg’s sued a company called Toucan Golf for supposedly infringing on its Toucan Sam trademark. A court ruled that Kellogg’s could not claim rights over toucans, only over Toucan Sam, and Crews found similarities in this case: “Castle Pines has not cornered the market on all potential uses of the hummingbird in commerce.”
The judge’s decision does not end the case, as the Brinkerhoffs are still seeking a final determination that their logo does not infringe, and Castle Pines is countersuing for deceptive trade practices and unfair competition. A trial has not yet been scheduled.
“We are surprised and disappointed with the court’s decision to temporarily allow Brinkerhoff to proceed in using the Bar Hummingbird name and logo,” a spokesperson for Castle Pines Golf Club said in a statement.
“While the case moves through the courts, we will remain resolute in our pursuit of the final judgment that the establishment’s name infringes on Castle Pines Golf Club’s rights in its registered hummingbird brand and trademark,” the statement went on to say.
Mark Brinkerhoff declined to comment on the judge’s decision. He said that opening dates for The Brinkerhoff and Bar Hummingbird are not yet known.
Get more business news by signing up for our Economy Now newsletter.
