Over the past week, word of another small brewery’s name change came into the news. The Shed Brewing Company in Michigan is now 127 Brewing Co. (the 556th suggestion as the co-owners brainstormed new brewery names…finding a solid name everyone loves isn’t easy!). Again, trademark issues. We’ll detail it below, but the lesson from this one is the same as the others, or maybe a bit more striking. As many breweries are hip to, trademark clearance search is essential before adopting a name. However, the conclusions a brewery draws from it are just as important as taking the time to conduct the search itself. Here’s the gist.
In Michigan, The Shed Brewing Company opened up early this last year. According to news coverage, they’d done at least some preliminary research about whether the name was in use or not. It’s not clear what search methodology was taken up, when it happened, or whether it was with the help of a lawyer or not. Nevertheless, they did find out there was a brewery in Vermont called “The Shed.” But, according to their research, the place looked closed so it appeared they’d be good to go under “The Shed Brewing Company” name. About six months into operations, however, the new brewery got a letter from a company that owned The Shed, including its trademark rights. In reaction, just last week, the small Michigan brewer announced its name change. Fortunately for them, according to the article, they hadn’t invested too much in the brand and the most costly direct expense was buying a new sign. Still, no new brewer wants to attract folks, start generating reviews, and gain word-of-mouth recognition, just to start that branding push over again. And, though we can’t know the exact details of how their trademark clearance search came about, it does seem like this headache could have been preventable.
Ever since sometime in 2012, there’s been a live and registered trademark on beer products that’s simply “Shed.” If you recall our recent post about dominance within a trademark, “Shed” would be the dominant portion of “The Shed Brewing Company,” so clearance would concentrate on just that word. Here, given that “Shed” already existed with a live registration, it’s a potentially huge problem, whether or not further research indicates the brewery has changed sizes, closed its main taproom, or anything else. Upon finding “Shed” with a live registration, a brewery might go a couple of routes. For one thing, it’s okay to conduct further diligence to see whether “Shed” is still in operation, but it’s important to keep in mind that the United States Patent and Trademark Office is pretty forgiving about some brief periods of non-use, as long as there’s intent to resume use. And, beyond that, even if there’s a good argument the mark is abandoned, as long as this existing trademark is on the register, the new brewery wouldn’t be able to get the benefit of trademark protection itself.
Jumping back to our trademark dominance conversation, the addition of a word or two could have made all the difference. Instead of “The Shed Brewing Company, it could have been “Empty Shed Brewing Company,” for example. In fact, there’s a pending trademark application right now for “Coal Shed,” a beer from a California-based brewery, indicating that the CA brewer and its attorney feel confident “Coal Shed” forms a different enough commercial impression to be able to co-exist with “Shed.” From our experience, the USPTO will likely agree, although “Shed” might not, potentially objecting to the use down the line. (As, as a side note, just a month or so ago, the owner of “Shed” filed yet another application, this time for “The Shed,” suggesting at least some concern about “The Shed Brewing Company” and its ability to co-exist with their existing mark.) Again, though, whether something like “Empty Shed Brewing Company” is as cool as “The Shed Brewing Company” is a decision for business owners—but it’s an important one. And, one that we feel ought to be made with all the information, before knowingly going ahead with a potentially conflicting mark that’s itself not capable of federal registration.
The bottom line is, by clearing early, then seeking your own trademark registration to establish turf—before the brewery ever opens—a brewery is best positioned to avoid name changes down the line. If a new brewery wants to cut costs and conduct a clearance itself, that’s up to the brewery. Start-up costs can be high and we recognize businesses are looking for corners to cut, although this is a risky one to skip. Still, the value and insight is not in knowing what’s out there, it’s in the interpretation of those results, to make the most informed decision moving forward. Indeed, trademark law doesn’t always operate the way you might expect it to work.
In closing, we’ll note, because we ought to, that as of right now it seems there’s no federal TM application for “127 Brewing Company.” Getting that extra protection of a federal trademark registration is up to the brewery, to be sure. But, boy oh boy, from our experience, it’s a relatively small investment for peace of mind that a brewery, its owners, and even the consumers who love the brand and its brews can potentially enjoy forever.