Trademark Lessons From Rockford Brewing Company v. Rockford Brewing Company

This month, there’s yet another brewery v. brewery trademark dispute playing out in the courtroom. See our posts here and here for our thoughts generally on trademark turf wars. (Spoiler: We fight for friendship.)

Trademark Disputes!

 

The case is Rockford Brewing Company, Inc. (Illinois) v. Rockford Brewing Company, Inc. (Michigan), filed January 13, 2014. (Extra-credit reading here.) As you might guess from the caption, the dispute reveals a lot about why every brewery should put registering its brewery name (and even its beer names) on the must-do list, and not put it off for later. It also reveals why choosing a distinctive name, or clearing your preferred name early and often, can also help prevent your rubber boots from getting stuck in the woeful throes of litigation…which feels about like a perma-hangover, we’re told.

The super-summarized gist: RBC-Illinois and RBC-Michigan are both located in towns called Rockford. RBC-Illinois has ties to a historical pre-pro/post-pro use of the RBC name, but there was a sizable gap in use (so the mark was abandoned), and now RBC-Illinois hasn’t been engaged in the kind of commerce that counts for all that long. Sometime in 2012, RBC-Michigan picked its name and started using it.

RBC-Illinois did seek a trademark on July 5, 2012 and just last week, after the complaint was filed, it finally registered. That development might cause the dispute to fizzle out, but maybe not. RBC-Illinois, even though it has successfully registered, isn’t in the clear. And, this right here is important. Basically, when your mark registers, you get nationwide rights back to the date you filed, but you take those rights subject to the territory of prior unregistered users. First to the Trademark Office only gets the “unclaimed” balance of the US. Especially bad news for these neighboring-but-not-neighborly breweries. Another reason why waiting even a day to register is a bad idea.

There are a lot of takeaways from the case, and it’s sort of a “textbook” example of the importance of registering. Our belief is that if you would be super, super, super bummed out with a tears-in-your-beer and/or anger-in-your-heart feeling if someone said to you (1) you can not expand your business another inch with that name or (2) you must immediately stop using that name on your brewery, beer, whatever…then you should register it. Today. Better yet, talk with your lawyer early on about clearing name ideas before you start using them, and registering them under section 1(b) as an intent-to-use mark. That way, you avoid “naming the puppy” too early, and getting downright attached.

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Running a Legal Sweepstakes, Contest, or Giveaway at Your Brewery

It’s fun to give stuff away. It’s not fun to get in trouble with the FCC for running an illegal lottery. Before setting up a sweepstakes, contest, or giveaway, there are some things every brewery will want to consider.

Vintage Lottery Ticket

According to the FCC, if a contest does these three things, it’s by definition an illegal lottery:

1. Giving away something that has value. (Prize)
2. The winner is selected by chance. (Chance)
3. The winner has to pay something (or do something) of value to enter. (Consideration)

To avoid being considered a lottery, legal contests take away one of the three elements. Of course, if you take away #1, it’s no fun for anyone!

When a contest organizer wants to select by chance, the consideration element has to go away. It has to at least be possible to enter for free. This is why you see prominent “No Purchase Necessary” language on a lot of contests, with an email or snail mail address to enter. Lottery laws are at the state level, too, and what counts as consideration varies by state. In some states, it’s okay to make your “free” entry method an in-person visit to the taproom.

If it’s a pay-to-play contest, then a winner can’t be selected by chance. It’d have to be something else, like skill. A brewery could think about running a pay-to-enter shuffleboard tournament, for example, where the rules of the game dictate the winner. Or, “skill” could be a little more intangible than that…like writing a poem that best captures the vibe of a beer.

Of course, depending on the state the contest is running in, there can be much more to it than this. Still, with these guidelines as a starting point, you’d be on your way to avoiding an awkward chat with the FCC!

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Can Breweries Legally Say “Gluten-free” on a Beer Label?

Goodness, gracious, great balls of gluten!
Goodness, gracious, great balls of gluten!

Gluten has been all over the news these last few years. We’ll say up front, celiacs disease is no laughing matter for a ton of folks. That said, did you know that thanks to recent guidance from the FDA, a bottle of spring water can legally be labeled gluten-free? All’s fair in love and FDA-condoned labeling, we guess. Anyhow, following up on our posts earlier this week about beer-labeling regulations, we thought we’d circle back to let you know the state of gluten-free labeling. It’s pretty confusing.

TTB and FDA take a different approach to gluten, so you need to know your regulating authority: Malted Barley + Hops = TTB; No Malted Barley or No Hops = FDA.

If you’re regulated by FDA, in mid-2013, FDA gave you the “gluten-free” green light if your product contains less than 20ppm of gluten, a level it considers safe. This is the case, even if the product contains inherently glutinous ingredients (like barley).

On the other hand, TTB-regulated beer is not affected by this rule, and hasn’t yet adopted FDA’s approach. According to the governing TTB rule, you can’t use the word “gluten-free,” even if you’ve processed the product to bring gluten down to safe levels below 20ppm. So, that sets up a weird dilemma for folks like Omission/Widmer who brew with malted barley, but process their beers well below the 20ppm threshold. If they were regulated by FDA, like sorghum-based brewers are (see New Planet), they could say gluten-free. Instead, TTB makes them say something like this: “Product fermented from grains containing gluten and processed to remove gluten. The gluten content of this product cannot be verified, and this product may contain gluten.” Rolls off the tongue, right? So, as you can imagine, Omission was pretty happy when FDA introduced its new approach, and it’s likely TTB will eventually follow suit.

So, will all of this matter to most brewers? No, probably not. But, it’s worth noting that you might already be producing a beer that is within the safe gluten threshold. To point to big-box examples, reports show that Corona and Budweiser technically fall into that range. Still, unless you’re actually engaged in a process to remove gluten to safe levels, even though your gluten is within safe levels, you still can’t use those magic “gluten-free” words , under FDA’s or TTB’s standards. Whew!

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