Our new breweries often seek legal and business advice about ways to get brand exposure, while building a connection with their community. And, one question that comes up is whether it’s a good idea to sell or sample beer at a farmers market. As you’d expect, a farmers market is a great place to engage consumers and other producers in conversation, in a fun and less formal way than even the most casual taproom environments allow. Still, although farmers markets are an awesome venue for talking beer, selling it, and introducing new friends to your brewery, Washington state law is really, really particular about when and how you can go about selling your beer at a farmers market.
For those considering shipping beer across state lines, to do so lawfully, you’ll need a Certificate of Label Approval or a COLA for short. If you’re already distributing in another state, then you might have (though we hope you haven’t) encountered pushback from Battle Martin, the hardworking Tobacco Tax and Trade Bureau (TTB) employee who handles all of the label approvals (more than 29,500 this year…). With a name as epic as Battle Martin, it’s fitting that The Daily Beast has written a nice sort of tribute to the man. The article also does a good job of pointing out just how persnickety the label-approval process is due to the myriad labeling laws controlling what you can and can’t say on your bottles. If you’re getting close to making an out-of-state push, it’s worth checking out the article to get an idea of what you’re up against. Of course, given how frequently certain label rejections light up social media, you may already be in the know. There are things your labels must say, and there are things they cannot say, and there are a lot of grey areas in between. For example, labels can’t confuse or mislead consumers, and they can’t directly or impliedly tout the effects of drinking your booziest batch of grog. Artwork, too, plays a big role in whether your label stands. You can’t, for example, make Santa look too toasted (see here).
Given how complicated beer-labeling laws are, it’s worth sending a note to your beer attorney before bringing in an artist to work up a design or toiling over a hilarious beer description only to find out you’ll need to make deep revisions to comply with the law. Folks like us at Reiser Legal PLLC are here to help, having battled Battle and made it out on the other side. Feel free to get in touch, and for further reading, check out some of our past posts relating to beer labeling and the COLA process here, here, and here.
It’s no longer surprising to hear about a brewery v. brewery trademark conflict. Even the non-legal-news follower hears about these disputes all the time, and most of what gets reported are conflicts during the registration process called opposition proceedings, which go before the Trademark Trial and Appeal Board (TTAB). Often, brewers come to an agreement before those things ever turn into expensive disputes, and filing an opposition or an extension of time to oppose can be more of a way for a brewery to preserve the issue and buy the time to come to an agreement before the other brewery’s mark registers. At any rate, what are far fewer are true brewery v. brewery lawsuits being played out in federal district court. These sorts of lawsuits tend to be more expensive, the stakes are high, and—of course—they also typically get resolved (at least, we always hope) before a judge or jury makes the call.
With that backdrop, we’re here to report that another brewery v. brewery trademark dispute has made its way into federal court in the United States District Court for the Northern District of California. This time, it’s the brewery we all know as Lost Coast from California (technically named as Table Bluff Brewing, Inc. as the plaintiff in the suit), and the alleged beer trademark infringer is Aviator Brewing Company from North Carolina. You may have seen some reporting on this elsewhere, and we need not comment too much on the case. The pictures tell the big part of the story on this one. But, what interests us maybe most of all is the story behind the story, which we can’t know and can only guess about. But, as a beer law firm, it’s the story we’re a part of all the time: helping breweries avoid getting into court and into headlines because of these potential disputes.
It would surprise us if Lost Coast didn’t attempt to reach out and settle this privately. After all, who wants to spend the $400 and the who-knows-how-much in attorneys’ fees in putting a complaint together? And, from the looks of the complaint, Lost Coast is in a pretty good position. They obtained a federal trademark registration for their Great White design all the way back fourteen years ago in 2000.
Again, they didn’t merely register the word “GREAT WHITE” but they registered the design itself. The design registration includes the following in its description: “A fanciful cubist style shark stands on a sandy beach holding a surfboard in one fin and a mug of beer in the other. The surfboard has a bite taken out of the top of it.” You’ve seen the Aviator design, so you know what’s at issue. But, from our very basic research, it doesn’t seem like Aviator even formed as a brewery until the late 2000s. Again, we can only guess that these breweries got in touch before filing the suit, but it’s a pretty good guess. And, although we can’t fault Aviator for trying to negotiate hard to keep some rights to what is a cool design and, no doubt, an important brand to them, we also feel bummed for both breweries and the brewing industry generally that another one of these trademark disputes has made the headlines.
It’s always our goal at Reiser Legal to help breweries resolve stuff behind the scenes. And, we are consistently amazed and delighted at how brewery owners are willing to give up a little turf that they may well have a better claim to, just to help another brewery out and avoid generating any bad blood. Really, the camaraderie in this industry is downright inspiring. Of course, when the overlap between two marks is too great, there’s not a lot that can be done to get a workable coexistence agreement in place. And, breweries like Lost Coast are totally within their rights (and positively charged with the responsibility) to enforce their registered marks.
Outside of the nitty gritty of this particular dispute, from our chair, there’s some wisdom in this one for any brewery that chooses, for whatever reason, to avoid registering all of its beer names and designs. It’s always a brewery’s own business call to invest in registration, and as this dispute and others highlight, we all can see why it’s well worth it. But, if the money’s not there or a brewery chooses to take a gamble on a design/name without registering, there’s a more affordable option that can at least offer some protection. A brewery might consider at least having its attorney make sure no one else has a substantially similar design or word mark already registered. That way, a brewery can generate bona fide common law rights, hopefully encouraging others to steer clear of that design/word mark—a better position than potential infringement from the start.
Last, we’ll nerd out on a legal thought, and welcome comments from our fellow beer and TM attorneys. There’s no copyright claim in Lost Coast’s complaint. We see at least that minimal spark of creativity here, and being able to prove 17 U.S.C. infringement, even if it’s just the threat of liability in encouraging settlement, offers potentially more to the plaintiff than under the Lanham Act. Maybe the brewery hopes to get this one out of the way early, with the least expense. Then again, it does seem worth amending to add another cause of action. What do you think?
We’ll keep you posted here as this one progresses.
Today’s post is short but sweet, and sort of a forehead-slapper. It’s been reported on elsewhere, including by our TM comrade Kenan Farrell, that an Oregon brewery (Full Sail) just sued an Atlanta-based DUI law firm. The claim? Well, trademark infringement. The complaint is on Kenan’s blog for you to read (great resource on Oregon TM law, by the way). The short of it is that the DUI firm had some cute beer coozies with logos made up for the firm that are eerily similar to one of the brewery’s beer logos. In our view, there’s pretty much no way the firm made its own logo without referencing the beer, but we’ll give them the benefit of the doubt because, well, why not? We’ll also note that, to cover bases, copyright infringement seems like another claim to have thrown in there (Visit here and here for some of our past posts on copyright v. trademark). Maybe the brewery didn’t want to fight any fair use fight, adding extra time and argument to the litigation. Still, sheesh, this one’s rough.
Takeaways? We love a good takeaway. For us, we’ll share this one. A lot of folks have been chiding the DUI lawyer for not knowing IP law. Maybe that’s the case, but maybe it’s not as bad as that. Here’s why. A lot of us aren’t as artistically inclined Adobe wizards as trained graphic designers, so we reach out to designers for help. Here, it’s totally possible the lawyer had never seen the beer logo before, but asked his designer to make his logo look like a beer label to be clever. The designer might have taken leeway from there, remembering the beer name that’s like the firm name, and running with the idea. Sure, maybe that didn’t happen here, but that sort of thing can absolutely happen to others, and it does. Having a solid agreement in place with your creative team of choice—and, if that’s in-house, making sure you know where your artist is drawing inspiration—can go a long way toward avoiding snafus or protecting you in the event one comes up. As Kenan F. predicts, and we totally agree, this one is likely to settle out and disappear from the docket pretty quickly. Still, too bad.
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.