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.)
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.