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:
- Start your journey by researching the use of your intended brand or mark. Check out this prior article that I published here on Brewery Law and be sure to check the US Patent and Trademark Office’s (USPTO) TESS, COLAs Public Search and even RateBeer.com to find out whether their is a prior use of your name.
- 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.