Safeguarding your craft beverage brand: A "trademark" is not as simple as it sounds.
Brand Protection doesn't always mean Trademark Registration.
In the craft beer world, one of the most important steps is to protect your name and your product names. Craft brewers are known to come up with creative and crafty names for their brews, but naming is only a small portion of the process. Is the name available? If so, you may want to obtain a trademark registration to protect it for your own use. Let's examine the process a new brewer might go through to help better understand the trademark journey.
Tale of the New Brewer
In the brand protection system, trademark infringement is considered especially heinous. In craft beer, the dedicated individuals who investigate these vicious offenses are members of an elite group known as Brand Owners. these are their stories:
Enter the new brewer, determined to make his way in the beer world.
New Brewer (NB): I want to open a brewery next year and call it Charlotte Brewing Company, in Charlotte NC. I immediately submitted a United States Patent and Trademark Office (USPTO) application for a registered trademark for the term Charlotte Brewing Company. Sounds good, right?
Enter Announcer Man, or AM (sounding suspiciously like District Attorney Jack McCoy):
AM: Actually, there are a couple of problems with that. Where to start? Let’s start at the beginning… you can’t register the term Charlotte Brewing Company. Charlotte is a geographic designation. And no one can own a geographic name. Or a name that means a geographic name. So, you can’t own the word "Charlotte" any more than someone could own the words "New York" or "Big Apple." The names are just too generic – the names of geographic features are owned by everyone.
NB: OK, well, I’ll just change the name to…
AM: Wait a minute, we’re not done yet. Even if you could register the name, you can’t register the trademark until you show use in commerce.
NB: I already did that! See, I’m selling T-shirts!
AM: Good, and that works so long as you only want to register the mark for making T-shirts. It doesn’t help you at all if you want to register for making beer.
AM: It will take the USPTO about three months to start looking at your application. So, you have just wasted your application/filing fee and about three months of time before the USPTO tells you that your application is rejected.
NB: Alright, fine. I’ll change the name to Third Street Brewing and submit it again.
AM: Do you know if anyone already has that name registered? Or someone is using that name somewhere and just hasn’t registered it yet? Or is someone using something close to the name? Have you done a trademark search?
NB: I did a search. I looked for "Third Street Brewing" on the USPTO website, and no one has it. I’m in the clear!
AM: Not necessarily. Did you know that for the USPTO, "third" is the same as "3rd," which is the same as "dritte" (third in German), or even "th3rd?" All these are the same thing as far as the USPTO is concerned. Did you look at all those permutations?
NB: Well… wait, that means that if someone has registered 3rd Street Brewing, I can’t register Third Street Brewing?
AM: Correct. That’s why it’s important to do a full trademark search. A trademark search identifies all the weaknesses and potentially competing trademarks. The search looks at all the permutations and nuances and who’s using what names when. That’s why a trademark search has a fee – it’s a special skill and, if you’re not trained or don’t have experience in this, it’s better to get help before you waste your time and money.
Additionally, not only does it have to be a unique name, you also have to be the first to use the mark for that kind of product. That’s why you then still have to deal with the fact that you’re not using the mark in commerce yet.
Luckily for you, there’s a way to deal with the not selling beer part. The USPTO has what’s called an Intent To Use Application –it’s a way to sort of hold your place in line until you are using the mark in commerce. There may be some additional fees, but it may be the best solution – depending on how soon you’re planning on selling beer.
(Insert sound effect: DUN DUN.)
The Gray Side of Brand Protection
Let’s talk about a couple quick nuances in that example. When many people talk about "trademark," what they really mean is brand protection. This is a perfect example of that situation. If the new brewer wanted to use Charlotte Brewing Company, and there isn’t already a Charlotte Brewery or something like that, he can use that name. And, probably, no one can stop him. He just can’t register that name as a federally registered trademark.
Trademark infringement lawsuits can land some breweries in federal court.
Geographic names are tough (see Carolina Brewing Company and Carolina Brewery), but let’s say that the new brewer in our example opens 3rd Street Brewing. And he operates the brewery for five years – and never registers the trademark. Then someone else opens up Third Avenue Brewing right next door. The new brewer, who has been operating for five years is done for, right? Not so. Just by using your mark, exclusively for a period of time, to sell goods/services gives the new brewer some trademark rights in a specific geographic area. It’s often called common law trademark.
So, if the new brewer in our example ran his brewery in his town for five years and never registered his mark, could he stop a brewery with a very similar name from opening up right next door? Sure. It’s clearly too similar in name and could easily cause confusion for buyers. Could he stop a brewery with a somewhat different name, like Fourth Avenue Brewery, from opening up across the country? Probably not. That’s what federal trademark registration is for. The scenarios in between are gray-er and really depend on a lot of specific facts.
This is just a simple example. We haven’t even begun to talk about the process, or the legal definition of "likelihood of confusion," what constitutes "use in commerce," or any of the other billion topics. Let alone how to enforce trademark rights after you have them. The point here is that trademark protection is neither as simple as it sounds nor easy to acquire as you might think. Even if you don’t hire a lawyer to help you, at least talk to an attorney about what you want to do; they can be really helpful in making sure you don’t waste your time or your money.
If you liked reading this article, you may also like: How to Build Your Craft Brewery Brand.