Brewery trademark law requires proactive action. Beer trademark disputes are on the rise, but largely preventable. Learn about the latest brewery trademark disputes and protection strategies, with insight drawn directly from a US brewery trademark attorney.
When trademark disputes pop up, often breweries agree to get along. In doing so, two beverage businesses can seek what’s called a trademark coexistence agreement. This is an agreement that essentially sets forth trademark restrictions on both brands, as the businesses mutually form a plan to distinguish themselves in the marketplace. A trademark coexistence agreement might, for example, provide that one business will only use the trademark in the name of its brewery. In turn, the other brewery may agree to only use the trademark as a single beer name. These agreements can be between two breweries, or they might be between businesses in different product categories. For example, a trademark coexistence agreement may be between an energy drink company and a brewery, a distillery and a winery, and so on.
One boon of a trademark coexistence agreement is that it settles the matter between the parties, giving each confidence in moving forward using its brand. Another boon, however, is that a trademark coexistence agremeent may help both brands obtain a federal trademark registration.
Imagine this common scenario.
Brewery A applies for a trademark, we’ll make up a mark and say the mark is GREEN PARADE.
Brewery A receives a trademark office action response. The response is an Office Action stating a Section 2(d) refusal to register the mark. The reasoning behind the Office Action is that another brewery, Brewery B, has a registration for, say, “BLUE PARADER BREWING CO.” The trademark examiner cautiously sees the closeness between GREEN PARADE and BLUE PARADER BREWING CO., and sees that both are on beer. The examiner believes there is a likelihood of confusion. Brewery A then has six months to respond to the Office Action and urge why confusion is not likely, else Brewery A may not be able to obtain its federal trademark.
Notably, though, he United States Trademark Office may refuse a trademark application when the two parties themselves don’t necessarily see a problem. For example, Brewery B called BLUE PARADER BREWING CO. may have no problem with Brewery A’s use of GREEN PARADE. Perhaps GREEN PARADE is the name of Brewery A’s IPA, and that’s it.
In this instance, Brewery A and Brewery B could hammer out an agreement between them that sets forth a plan to coexist in the marketplace. This is a trademark coexistence agreement. Typically, the document contains an ancillary agreement called a trademark consent agreement. The purpose of the trademark consent agreement is to concisely set forth the main terms of the coexistence agreement, in a way aimed toward presentation to the USPTO trademark examining attorney.
The trademark examining attorney can use the consent agreement as evidence there is not a likelihood of confusion. After all, if the mark owner itself does not see a problem, it makes sense to defer to that mark owner’s judgment.
That said, the trademark examining attorney is not bound to accept the consent agreement. Sometimes, if the marks are just too close, even if the breweries agree, both may not be able to obtain a federal trademark registration. Of note, there was a recent matter where two breweries agreed to coexist. One brewery had TIME TRAVELER BLONDE, and the other brewery had just TIME TRAVELER. Despite a coexistence agreement and a consent agreement, the examining attorney believed the marks were nevertheless too similar. There was an appeal, and the Trademark Trial and Appeal Board agreed with the trademark examining attorney.
Brewery trademark disputes. We’ve held off on reporting on them for a while. In partial part, it’s because there have been so many—we couldn’t keep up with coverage here, even if we wanted to do so, and mainstream media is all over getting the word out. In partial part, it’s also because we have been addressing the growing trademark needs of our own clients, from proactive trademark investigation to early application, enforcement, and beyond. It’s kept us very busy. Nevertheless, the latest dispute to hit federal court comes to us from this writer’s home state of Indiana—so I felt the need to note the ongoing dilemma of names and beverage businesses.
This dispute is between Colorado’s Great Divide Brewing Company (the plaintiff, or the one who filed the lawsuit) and Indiana’s Red Yeti Brewing Company (the defendant). The case was filed in the United States District Court in the Southern District of Indiana, and is on the docket of a Magistrate Judge with whom I had an externship while in law school, Magistrate Judge Debra McVicker Lynch. I’ll be closely following this one.
We don’t need to dive too far into the complaint itself or the legal jargon to get at the case’s issues. It’s fairly simple.
Great Divide has a trademark registration for YETI as a word mark (Reg. No. 2,957,257). Great Divide also has a trademark registration for a design mark containing an image of a yeti (Reg. No. 4,115,050). Great Divide is taking issue with the use of YETI in Red Yeti’s name, and they are also taking issue with Red Yeti’s logo.
This sucks, for everyone. No doubt, this will get swept up into the media, and there may be a frenzy on social media about it. Each brewery will get cast in a not-so-nice-light by someone somewhere, regardless of your feelings about the matter itself. Red Yeti may be called out for all the similarities between the brands, particularly the design mark. Great Divide may be called out as part of the public outcry these days—perhaps about how there’s a dwindling number of names that breweries, wineries, and distilleries haven’t used yet, about how it’s next-to-impossible to find a clear name.
We hear this latter lament from clients and would-be clients almost everyday. It’s a real one, although I am constantly amazed by just how many good brands are available. Indeed, with a little strategizing, coupled with hearty investigation, a would-be brewery or beverage startup can be best positioned (although never outright guaranteed) to avoid these sorts of headlines, costs, and frustrations. After all, it ain’t cheap to rebrand a brewery, and it’s not fun either. And, it’s especially (fiscally, emotionally) expensive to deal with litigation.
If anything, this trademark dispute highlights a common line of misconception—one we’ll take the chance to point out here. Although it might be beer name on the one hand, brewery name on the other, it doesn’t necessarily matter. Both are uses in connection with beer. Just because someone is using something as a product name, it doesn’t mean you can use it as a house mark. To highlight this issue, one might expect problems by naming a brewery PLINY THE ELDER BREWING CO., drawing heat from Russian River. Moreover, if I named my brewery DARK LORD’S BREWING CO. I might expect a swift note from the folks over at Three Floyds. In these examples, you can see how descriptive words like “BREWING CO.” do not help much. Moreover, if I added a color—BLACK DARK LORD’S BREWING CO.—it doesn’t help much either.
On a similar note, just as there’s no distinction these days between a brewery and a beer, the trademark powers that be tend to not see much of a distinction between a brewery, a winery, a distillery, beer, wine, cider, mead, whiskey, tequila, and so on. If there’s prior use on alcohol or someone who makes it, and similarity between the marks, then it’s a potential problem. Certainly worth exploring.
Here’s hoping the parties swiftly find resolution.
Over the weekend, the hard-working Kendall Jones over at the Washington Beer Blog reported on the latest trademark dispute to hit Washington breweries. This time, between them.
Three Magnets Brewing Company over in Olympia had called their flagship IPA “Rainy Day IPA.” They got into a scuffle with another Washington brewery, not named in the article, and ended up changing the beer name.
No matter the breweries involved, the lesson is the same in the others we’ve seen. It’s the same for any industry, not just brewing. Before naming a business or investing in the release of branded flagship products—before launching any brand material you’d be bummed to change—the process is the same:
Proactively clear the mark yourself. For the beer industry, that means using Google, Ratebeer, Untappd, Beer Advocate. Basic clearance involves looking for beers, but also wines and spirits. If it’s a brewery name, it involves looking into the names of bars and restaurants out there. Strike ‘em off the list or seek the counsel of a trademark attorney when finding a potential conflict or issue. The visual similarities between the marks matter, as do similarities in sound and in meaning.
After pre-clearing and locating marks that seem potentially clear (or, at least, less fraught with problems), the next steps is to seek a professional trademark clearance report and analysis. Sure, you can search the trademark register yourself as a part of your pre-clearance processes. But, recognize that it’s not just the “hits” that matter; it’s the interpretation of the hits, the status of the marks, and how to interpret the results. It’s also knowing how to conduct the right search in the first place to not miss potentially confusingly similar (not just identical) marks. Getting a professional opinion from a trademark attorney doesn’t have to cost a fortune. And it shouldn’t.
When finding a direction that appears clear, file. Not next week or next month, but immediately. The trademark register moves quickly. Beers are launched every day. Both filings and unregistered releases have implications on your potential trademark rights. You can file an intent-to-use trademark application before you launch products. Before you open the brewery.
Now that you’ve done it right, stay on the lookout. Monitor for potentially conflicting applications and uses.
In closing, I will make one general note, when looking toward the future. Keep in mind that having a pending application or even a registration doesn’t immunize a brewery from potential name issues; despite careful planning, no one can predict how broadly others will construe their brands (See, for example, Red Bull opposing Old Ox Brewing). Even when you’ve done everything right, it can be expensive to maintain rights. Others can infringe, and you may have to stop them. Others may find you infringing and it’s expensive to fight it, even when they have a bad case. That’s an unfortunate reality. But, taking these steps is not just best practice, it’s essential practice for any brewery or beverage business that wants to stake a strong and long-term claim to its branding material. Budget for protection, the same way you’d budget for opening a brewery in the first place or planning for expansion. Get yourself on the register and visible to others looking to protect their brands.
It’s a minimal investment given that properly staked-out rights can potentially belong to the business forever.
First, there has been some confusion about how Lost Coast obtained a trademark for a term that is descriptive. And, there’s no doubt the term is descriptive. Keep in mind that trademark law does provide a way for you to get extra rights in descriptive terms. Although, as I’ll cover soon, they’re not completely rock solid even when you do get them. At any rate, the way to get these presumptions is to engage in substantially exclusive use of the mark for a period of five years. In this instance, the USPTO initially refused Lost Coast’s mark, to which Lost Coast averred that it had been using the mark in substantially exclusive use for the statutorily required time. Refusal overcome.
So, some onlookers might see an issue with this. Is it fair to lock up terms that are descriptive? Well, no it’s not. And that’s why a descriptive trademark registration, if it can even be obtained, is not the preferable way to go. That’s because trademark law includes a doctrine of “fair use.” The defense lets anyone make “a use, otherwise than as a mark… of a term or device that is descriptive of and used fairly and in good faith only to describe goods or services of [a] party, or their geographic origin.” 15 U.S.C. § 1115(b)(5)(A)-(C). This defense applies to every kind of trademark. However, you can imagine that if you have a descriptive trademark, it’s most certainly going to invite issues of fair use.
So, what does this “fair use” doctrine really mean? As you might have guessed initially, nothing about the Lost Coast Tangerine Wheat trademark says that no one else can brew a tangerine wheat beer. That’s a given. And nothing about the trademark locks others from saying so on their labels. All the Lost Coast Tangerine Wheat trademark does is prevent users from using the mark (1) as a trademark in (2) a confusingly similar way. Lost Coast can’t control anyone’s use in the fair descriptive sense (think size, placement, styling, as discussed in the comments to this article). Of course, (expensive) battles can be fought over which is use is which, and that’s probably why Peddler decided to fuhgettaboutit and call it a Tangerine Hefeweizen, as depicted here from a post on Peddler’s Facebook page.
It might help to know, when does a use of a term become a trademark use? I posit that it can be a fine line in the beverage industry. Traditionally, one way you can test to see whether a given use is trademark use is applying the “brand” rule. If you can insert the word “brand” after the use and it makes sense, then that’s use as a trademark (so use your TM or Circle-R accordingly).
Example: These are the three Peddler Brewing employees.
The employees are not Peddler Brewing brand. They’re the company’s. That use isn’t being used as a mark.
Example: Peddler Brewing once brewed a tangerine wheat beer.
Okay, well this is a bit of a trick question. Peddler Brewing isn’t being used as a trademark here, and this one is going to come down to whether the use is as a mark. I have it in lowercase here. Would your opinion change if it was capitalized?
To that, it’s worth taking a look at this design for Lost Coast’s “Tangerine Wheat.” I recognize that the brewery likely made more independent use of the name “Tangerine Wheat” on tap lists and elsewhere, but do you think this use of “Tangerine Wheat” is necessarily as a trademark at all? Is “Tangerine Wheat” telling you, the consumer, anything about the source of this beer? Or is it “Lost Coast” who has a tangerine beer, or perhaps “Lost Coast Tangerine” (or, this example, “Tangerine”) that’s what’s forming your impression?
This gets at a peculiar question I’ve been mulling over for a while now, and would love to toss it out here for your thoughts. In beer, when is a style signifier being used as a brand, and when is it just a style signifier? Moreover, when does use as a brewery name + beer name become a unified mark forming a solitary consumer impression (independently or, at the very least, in addition to the brewery brand name and the beer brand name)? In some instances, it’s not quite as easy to discern. (Although, I will note, Sixpoint seeks trademarks for all of their beer names with their brewery name first and the beer name itself following, so it’s one unitary mark, e.g., “Sixpoint The Forager”; “Sixpoint Nasty Tyger Ale,” etc.). That’s a unitary brand. And, I’d argue that every brewery has common law rights to its unitary brands as well. For example, Russian River has a beer Pliny the Elder. If I release a “Russian Elder” beer, I think we’d have problems, because I believe Russian River has a common law claim to Russian River Pliny the Elder, and that’s just the point. But I’m getting away from the heart of this particular brewery trademark dispute. Some more relevant examples.
When you see it on a bottle, is Left Hand Milk Stout a brand all together? Is Sierra Nevada Pale Ale? Or do you see two brands there? Left Hand and Milk Stout? Sierra Nevada and Pale Ale? Certainly, in the RR/Pliny case, both brands are at work independently. As I noted above, I’d say they’re at work together too. But in the Left Hand Milk Stout instance, is Milk Stout doing any sort of independent branding work for you?
So, let’s return. Take a look at the label again. Do you see Peddler Brewing Tangerine Wheat brand beer? Or, do you see Peddler Brewing brand beer, in this instance a tangerine wheat. Or do you see two brands, Peddler Brewing brand beer and Tangerine Wheat brand beer, each pointing to the same source?
If what we have here is the unitary brewery trademark— Peddler Brewing Tangerine Wheat—would you even say it’s confusingly similar to “Tangerine Wheat”? Or, does the dominant leading portion of Peddler Brewing do enough to tell you about its source. Perhaps this gets to a deeper question, apart from the trademark registration, does “Tangerine Wheat” tell you anything about “Lost Coast”? Or is it always a Lost Coast Tangerine Wheat to you? Looking outside the beer industry, where we love naming individual beers, was it a Mountain Dew Code Red? Or both a Mountain Dew and a Code Red to you? Does your opinion change if it was Mountain Dew Code Red Soda? Assuming it was just Mountain Dew Red Soda, would they have extra rights to Red Soda if they had gotten to the term first? Wouldn’t “Red Soda” just be generic as what the product itself is? Is a beer always just a beer? Or is the beer style (a tangerine wheat) the generic product itself? I posit that a term like tangerine wheat, on the spectrum of distinctiveness, has a high risk of falling into the generic trap.
I think these issues of unitary marks are going to be an increasingly fascinating issue in the beer world. Take again my example of a hypothetical Russian Elder Brewing Company (Russian River / Pliny the Elder). Or a Three Dark Lord (Three Floyds / Dark Lord). Or even a Dog Minute (Dogfish Head / 90 Minute).
And one last caveat, even if I’m singing only to a choir of beer trademark enthusiasts by now. Every brand should be aware of the trademark death knell, and that is genericide. When the mark itself becomes the generic term for the thing, the trademark owner’s mark is subject to cancellation. ‘Tis no more. This is why if you look carefully on your Kleenex package, it lets you know that they’re Kleenex “brand” tissues, because Kleenex cries a little into their kleenex every time you refer to a kleenex as a kleenex. They don’t want to go the way of linoleum which once, indeed, was a brand. What do you think?
I think it’s arguable that an I.P.A. or a Porter is very much a generic (and not descriptive) term. To consumers, it’s perhaps the thing itself, as opposed to those terms being descriptive and “beer” being the generic term itself. The same way we could theoretically describe all vehicles as motor vehicles, but “car” and “truck” are generic terms too.
Is a tangerine wheat just a product? Well, Lost Coast hopes not. And the moral of the story is, that when you’re dealing with a descriptive mark, you might just have to spend to keep it that way.
What’s the inspiration behind your beer label? Do you know if it’s original?
So many of our brewery clients have rad acquaintances who are graphic designers, eager to get onboard and build out brand material for little cost. Other breweries may not have the personal connections, but recognize the importance of brand material, and make significant investments in outside creative professional services. Both are great routes, and our post last year touched on copyright concerns in structuring even the most informal of those relationships, to make sure copyright ownership flowed fully to the brewery. Today, I’ll renew our discussion, highlighting another important point. This one is unfortunately inspired by headlines involving our friends up there in Canada, and it emphasizes again how important it is to get a strong creative services agreement in place whenever you’re engaging outside help.
Take a look at these two images. One is a beer label, the other an excerpt from a comic book. Eerie similarities, right? It turns out that Canada’s Central City Brewing hired an agency to create a beer label for its saison. The day before its release, the brewery proudly posted its rocking label art on its Twitter account.
Literally hours before the beer was due to be in stores, Twitter fans pointed out the infringement issue with the character Deena Pilgrim from the comic book series Powers. It seems the brewery had no idea, and thought it was getting a cool piece of original artwork.
So, what happened? The brewery had to put the release on hold and paste 24,000 new labels by hand onto its bottles. Below is an image of the new beer label. (Sidebar: Bear in mind that ideas are not protected by copyright law, but expression is. The concept of a foxy detective wielding her badge isn’t infringement, but as you drill down into specific choices—the placement of fingers on the badge, the style of the hair, the facial expression, the angle of the stance, the decisions involving light and shadows—that’s when you cross the line from idea over into expression. That’s when you run into problems.) Ultimately, this is a frustrating outlay of cash. And, although we’d like to think it was avoidable on the part of the ad agency, I’d like to think it’s easily reimbursable based on the agreement in place between the companies.
So, how do you avoid this sort of issue? First, it’s important to get an agreement with your designer in writing that not only vests ownership in the brewery, but one that also is designed to address situations like this. That’s what a contract does, it sorts out who is liable for what, in the event all sorts of things go wrong with the relationship. This is the sort of thing that could foreseeable go wrong with a creative services relationship. We don’t know what was in the agreement here. But, it’s important to note that it was a professional agency that turned out the problematic work. Do you know where the design direction for your logos came from? Do you know what works were used as inspiration? It’s important to note that even the most talented of designers may not be familiar with the nuances of trademark and copyright, which are often confused in the media. In evaluating trademarks, a comparison of the goods/services in question comes into play. A badge-wielding agent could be used in connection with computer speakers and a brand of beer, and consumers probably wouldn’t be confused. But, when it comes to copyright, protectable elements of a work are afforded strong rights, even and especially when they’re used in different media and on different goods and services.
Best practice is to be proactive and get a copyright agreement in place. On the flipside, best practice is also to copyright your own works as soon as they’re created. No one wants to be the one slapping new labels on through the night, with doubt in your mind about just how easily you’ll get this expense covered. Beyond that, no one wants to be the company whose valuable brand material just got infringed upon. Taking both steps help best protect your brewing business, no matter how the dice roll.