Shoot an Email, Save Thousands: The Best Advice I Can Give You About Your Trademark Issue

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Trademark issues are becoming the single most popular legal topic amongst breweries. I hear the gripe in brewer meetings, client calls and publications across the web. The world of beer is shrinking and the pool of names is shrinking.

 

 

Do we have enough words left to continue naming beer creatively? Should we just stick with descriptive monikers like IPA, Pale, ESB and so on? I say nay to the latter. Brewer creativity is at all time high as we are seeing more new styles, style-less beers, and blended concoctions each day. So keep this creativity rolling and let’s figure out a better way to handle it.

 

Here are a few things that you need to know about beer trademarks:

 

 

  • The US Patent and Trademark Office no longer distinguishes between beer, wine and spirits. In the past, someone could get a TM registered for “rickshaw” in all three classes. Nowadays, as the disappointing Black Raven/Ravenswood action taught us, the USPTO considers each of these classes “related products” and that a mark in one class will likely cause confusion with the same mark in another class. So, if you find a wine or liquor brandishing your name – it is best to look elsewhere. 

 

  • If you are in the clear, you need to register quickly. The law allows a person to file for registration before even using the mark, by filing a 1(b) application with an intent to use the mark. By law, you are entitled to file a total of five (5) individual six (6) month extensions (a total of 30 months) to show the USPTO that you are indeed selling a product using the mark in interstate commerce (better find your favorite over the border store!).

 

And now for my best advice. This advice can save you thousands of dollars someday – and lawyers might hate me for it.  If you have a dispute over a mark that you want to use, or that you currently own, here is what you do: TALK. DON’T SUE. The brewery community is a tight one, even though it continues to grow every day. By simply shooting an email to someone who has a potential right in the mark – or a potentially conflicting use – you can save thousands of dollars, months of time, and respect in the brewery community. Heck, some breweries have even turned these conversations into a collaborative, and very profitable, brew.

 

There is a time to file a lawsuit to enforce your trademark rights – and it is nowhere near the time you first learn of a potential problem.  Breweries are pulling the trigger on a legal letter from their lawyers way too early these days. There is always an opportunity to resolve the dispute well before the letter goes out. Once the legal letter goes out, you immediately put the recipient on the defensive. So please offer an olive branch first, before you pull out the guns.

 

Your attorney should be more than willing to help you come up with the right words to say in your initial discussion – it just does not have to come on their letterhead.

 

 

 

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Don’t Wait Too Long To Protect Your Brewery Brand

Before you even get to the USPTO – there are a number of things you can do to preserve your brand.

 

 

Many brewers think that their brand is an afterthought. Others believe it is the end-all-be-all to their success. Well, there is no doubt that a brewer’s brand is incredibly valuable. The logo, design, and copy on the packaging all require attention – early on.

 

So I am often asked by brewers to tell them when they need to go about protecting their name and logo. The answer: yesterday. The craft brewing industry has become swollen. There is a massive group of potential branding competitors and you do not want your brand to become confused with another. Therefore, you need to be proactive and take some steps to ensure that your brand stays yours, and yours only.

 

Even before you get to brewing commercially, you should focus in on a theme that represents what you make as a brewer. The theme will help you easily craft a name and logo that fit your motif. Once you hammer it down and work with an artist to put your vision on display – it’s time to be proactive and protect it.

 

Before you speak to an attorney, you could do the following:

 

  • Search TESS, the federal trademark registry. Look for other “beer” related brands that might be confusingly similar to your own name.
  • Search COLAS public, the federal label registry. Look for other labels and brands that are on the market with a similar name – heck even a specific beer with your brewery’s name would be potentially a threat.
  • Check for available Domain Names. Go to your favorite online domain provider (GoDaddy, 1&1, etc) and search for your name and similar variations (i.e., if you pick Little Bear – look for Small Bear, Tiny Bear, etc)
  • Check for social media availability. Go to Facebook and Twitter and make sure someone else is not using your handle for a branding purpose.

 

Once you have satisfied yourself that you have a brand — call your counsel and file your trademark. Under federal trademark laws, you have the ability to file on the basis of “intent to use,” meaning that you are not required to prove to the US Patent & Trademark Office that you are currently using the mark in interstate commerce. Instead, you get some time to get the brewhouse in place, fire up the kettles and begin making beer.

 

A federal trademark registration is the best way to inform the general public that you intend to use this brand. You can file a mark for either your name alone, your logo alone, or a combination of the two – so there is little reason to delay.

 

Be proactive and protect your brand early on. It’s simple, efficient and effective. Then, get back to brewing.

 

 

 

 

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