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Skyyguard co-founders Sean Smith (left) and Chase Baron.
Skyyguard co-founders Sean Smith (left) and Chase Baron.
SKYYGUARD

SKYY Vodka Challenges Colorado Contractor's Trademark

Can anyone own the skyy? SKYY Vodka wants to.

The distilled spirits company is challenging a trademark application filed by Skyyguard, a Denver-based, veteran-owned contracting company that specializes in roofs and storm-damage repair. Founders Chase Baron and Sean Smith wanted a name that symbolizes professionalism and trust, and they realized that when you put two capital YYs together, it kind of looks like a house.

They formed Skyyguard in January 2018 and soon after fixed their first roof in Colorado. Then they filed for a trademark on the name in August 2018, hoping to expand the business to Texas and Florida, where they both have roots. Instead, they encountered a legal battle as unexpected as any Colorado hailstorm.

Campari America bought Skyy Spirits in 2001. Since 2012, the beverage company has challenged 133 applications before the Trademark Trial and Appeal Board, from Lyyt vaping products to Skyy High Records and Gray Skies Distillery. According to its website, that challenge prompted Grand Rapids-based Gray Skies to change its name to Eastern Kille Distillery.

Unlike with cases filed in federal court, the Trademark Trial and Appeal Board can't award attorneys' fees, so each party bears its own costs, which can quickly amount to tens of thousands of dollars. If the case goes to trial and expert witnesses are needed, the bill can reach $100,000.

A bartender pours a vodka cocktail.EXPAND
A bartender pours a vodka cocktail.
Westword

Right now, the challenge to Skyyguard is still stuck before the board, and costs are mounting.

"We feel on the major factors Campari America will lose, which is why they try to outspend their opposition to get them to give up," says Terry Wyles, Skyyguard's attorney. "A lot of people don’t have the stomach for it."

But the founders of Skyyguard don't plan to give in. “At the end of the day, we know the problem is not with our name,” says Baron. “The problem is with that schoolyard bully. If we were to go the route and avoid it, that would not solve the problem.”

Baron still remembers what it was like to be a scrawny 110-pound high school freshman, running away from bullies. “It was an avoidance tactic that I took at a very young age, but it didn’t solve the problem," Baron says.

Baron went on to become a Navy missile technician, and met Sean Smith on the U.S.S. Rhode Island in 2005. Baron left the Navy in August 2010, then built a career in sales and marketing.

After his stint on the Rhode Island, Smith worked as a Navy recruiter before leaving the military in 2013. He moved to Colorado when his old buddy said he'd found a great job opportunity. When that dream job turned out to be a nightmare, Smith and Baron decided to work for themselves.

“Once we ended up getting into construction — specifically, roofing and storm damage restoration — we saw a need for a name-brand company in an industry that was just lacking professionalism," Baron says. "We wanted to actually create a name brand, protecting residential and commercial property owners' investments from the weather.”

Smith chose blue and gold, the colors of his home town of Parkersburg, West Virginia, for the Skyyguard mark, and adjusted the logo until it looked like the perfect home. He still has the hand drawings of his first drafts.
“We realized we had the ability to do things right in an industry where there are a lot of people cutting corners," Smith says. “There’s enough money in the industry to do the right thing."

The disputed mark.EXPAND
The disputed mark.
SKYYGUARD

Over the past two years, Skyyguard has fixed about forty roofs in the metro area, building their brand shingle by shingle with each five-star review.

Even though there's a big gap between vodka and roofing, it's not unusual for a trademark owner like Campari to protect its intellectual property. In fact, it's required if the owner wants to keep it.

“The rule in trademark law is that a trademark owner has to police their mark, meaning that if you own a trademark for something, you basically have an obligation to make sure there's no confusion happening in the marketplace," says Viva Moffat, a professor at the University of Denver Sturm College of Law. Although Moffat is not affiliated with either party in the dispute, Skyyguard's attorney took classes from her in law school.

Beyond customer confusion, Skyy Spirits is claiming dilution: If too many businesses in the market use “skyy,” the double y would cease to have meaning for the vodka company.

Dilution cases are notoriously difficult to prove, wrote Barton Beebe, a professor of intellectual property law, earlier this year in the University of Chicago Law Review. Beebe argues that mere association is not the same as dilution, noting that "evidence that consumers associate a junior mark with a famous senior mark does not, as a matter of necessity, indicate that the senior mark is likely to suffer dilution via the blurring of its own associations with its source or other attributes."

Moffat, among others, compares the Skyy case to that of Backcountry.com, an outdoor apparel company that filed more than fifty trademark claims against other companies using the phrase “backcountry.” After reading about his own company in the news and learning that more than 18,000 people had joined a Facebook group to boycott his brand, backcountry.com CEO Jonathan Nielsen fired his lawyers and apologized.

“Given how rarely successful dilution claims are and how remote the possibility of actual confusion is here, that's what makes me think that seems like real overreach, and I just don't even understand why they're pursuing it," Moffat says. "Seems like a waste of money and time for no beneficial purpose to consumers or to themselves."

Both Campari America and their attorneys at Greenberg Traurig, an international law firm that raked in $1.5 billion last year, declined Westword's requests for an interview.

In legal documents opposing Skyyguard's mark, they argue that "the degree of similarity between applicant’s Skyyguard mark and Campari’s SKYY mark is so substantial as to be likely to cause consumers to make an association between the parties’ respective marks that will impair the distinctiveness of Campari’s famous SKYY mark.

"Over the past decade alone, Campari has spent hundreds of millions of dollars to advertise and promote its SKYY brand products throughout the United States, with more than a billion dollars in sales of SKYY-branded products in the United States," the beverage company's complaint continues. "The SKYY brand is routinely ranked by independent, third-party sources as one of the Top 10 most popular and best-selling vodka brands in the world."

Skyyguard knows what it's up against, but it isn't backing down. 

“You can’t solve the problem by avoiding the bully," Baron says. "They want us to go bankrupt before we have a voice. That’s a terrible way of doing business, and I can’t help but want to protect others from going through this.”

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