This past week, we’ve seen blogs light up with coverage of the “Natty Greene’s” trademark spat. It’s a simple one: a craft brewery has recently applied for the “Natty Greene’s” trademark and Anheuser-Busch InBev already holds a similar trademark in “Natty Light.” InBev is opposing the trademark application, saying it’s too close to theirs. There’s not much more to it than that. A few bloggers have been characterizing InBev’s position as “completely ridiculous,” and though we champion the little guys every day, it’s our view on this one at least that InBev’s position is completely understandable. Indeed, this dispute gives us a good opportunity to discuss something every current or would-be trademark owner should understand: dominance. Nope, we’re not talking machismo or market share. Rather, it’s important to consider, know, and be very careful to “clear” (more on that here) the dominant portion of your trademark (and, of course, the rest of it, too).
If you’ve ever selected a trademark, you know that it can be a persnickety process. A not-so-secret to avoiding struggles down the line is to make as certain as possible that the “dominant” portion of your trademark steers clear of someone else’s. (Of course, those someone elses not only include breweries but also other alcohol producers and potentially even restaurants with bar services.) How do you know what’s dominant? The body of trademark law has articulated a ton of ways to get there, but it’s fair to say that dominance is pretty much a hunch with a healthy dose of common sense. Let’s turn to the Natty dispute to illuminate this whole thing.
Right now, InBev calls its well-known frat juice “Natural Light,” and has a trademark for “Natty Light.” Consider that, just as you can’t claim extra-special rights to descriptive words like ale, lager, rauchbier, IPA, etc., InBev’s TM can’t claim exclusive sorts of rights in the word “Light.” Everyone else is free to use the word “Light,” so the thrust of the “Natty Light” trademark, what really matters, is that “Natty” portion. You could think of it as mostly a trademark for “Natty.” This makes sense. If the trademark was for “Natty Ale,” the part that you’d expect to resonate with consumers would, again, really fall on the “Natty” portion of the mark. We all know what the “Ale” or “Light” signifies, and it doesn’t tell us anything about the source of the product.
So, keep in mind that if you owned and paid for a trademark with a dominant portion of “Natty,” you’d have an affirmative duty to look out for conflicting uses. Otherwise, you can lose the rights you paid to get. Anheuser-Busch InBev takes active steps to police its marks, like we do for our clients, by reviewing a publication every week that lists all the new trademarks published for opposition. In recent weeks, “Natty Greene’s” was published for opposition, and InBev opposed. Even though “Natty Greene’s” is a pretty awesome name that tips its hat to Greensboro, NC’s namesake hero General Nathanael Greene, not all consumers outside the NC region are going to know that. If someone heard “Natty Greene’s” in a commercial, it might not sound much different from other sort of “Natty + descriptive word” marks such as “Natty Blue” or “Natty Red.” Just hearing a list of beers on tap, consumers might think that “Natty Greene’s” came from the same source that brought them “Natty.” And, when you get a nationwide federal trademark, you’re hoping to protect yourself from potentially confusingly similar uses like that. That’s where InBev is likely coming from.
Some commenters have also pointed out, and we’ve been hearing more buzz about lately, that there are tons of federal TMs out there in conflicting categories that make use of tons of words. It might seem like there’s too much already trademarked to be able to choose a protectable brand name. In our view, it’s definitely true that there are plenty of icebergs in the water to steer around. But, depending on how you use a word in your mark—in other words, what’s dominant in your mark—those existing trademarks may not be icebergs at all. Your TM-savvy beer attorney can help you figure that out.
Turning back to the matter at hand, “Natty Greene’s” may well make it past opposition, and we hope InBev and these guys can figure something out here. But, for the sake of discussing TM dominance, consider this. What if the applied-for TM wasn’t “Natty Greene’s” but instead “General Natty Greene’s.” There’s still the same word overlapping, but when you read it or if you say it, there’s way less weight on “Natty.” The emphasis is more balanced, and InBev would have a much harder road to say it was confusingly similar. In the existing application, the apostrophe does help, but not in quite as dominant of a way. Making it more obvious with just two more letters—”Mr. Natty Greene’s”—could arguably be enough to signal to consumers that this is a different source than the origin of that other barely-yellow stuff. Now, whether brands like “General Natty Greene’s” or “Mr. Natty Greene’s” are cool brand names would be up to the business owners in planning, but this is the sort of information every brewery should want before picking a name and investing in it both emotionally and financially. This is the sort of information Reiser Legal and fellow beer attorneys are glad to provide, because no one (these lawyers included) wants to be fighting a fight we can help you avoid in the first place.