Written by William G. Heedy, Esq., of The Van Winkle Law Firm
What breweries need to know about trademarks…
The Asheville area is home to a thriving craft brewing industry with well-established brands, as well as up-and-coming breweries. As the industry continues to grow, it is important for breweries to consider their trademark rights with respect to their brand and brews.
Why It’s Important to Register a Trademark
Businesses generally utilize trademarks for identifying their company name, products, and services as soon as they begin using the trademark in commerce. Sometimes—hopefully, most of the time—these businesses will consider exploring the trademark registration process.
Brewery businesses face particularly unique concerns relating to trademark rights, given the proliferation of trademarks used to identify brews. While these concerns can vary depending on whether distribution is being considered, they exist regardless.
Federal registration of a trademark for use in connection with beer provides, in part, nationwide notice of ownership of the trademark in conjunction with beer. By not federally registering a trademark, breweries are at a risk of potentially narrowing the geographic area within which the brewery might wish to expand or a certain brew might be distributed. In other words, registration preserves a company’s rights to expand while simultaneously preventing others from using the mark where a likelihood of confusion exists. For these reasons, businesses with an eye toward expansion are particularly encouraged to consider registering their trademarks.
If a brewery registers a trademark and continues to use the registered trademark for five consecutive years, then an Affidavit of Incontestability may be filed, which considerably enhances the owner’s trademark rights. In the event that a dispute is litigated in court, several defenses to trademark infringement would be eliminated.
The ultimate goal for any brewery business is to build and develop a longstanding product that people enjoy.
When Starting a New Brewery
Before starting a brewery business and using a trademark—in this case, a trade name—to identify the new brewery, the business should perform a trademark clearance search. Conducting a trademark search is necessary for ascertaining the availability for registration of a particular trademark and, perhaps more importantly, identifying potential conflicts that might be encountered if the use of a particular trademark is adopted.
I’ve seen breweries and bars right here in Asheville have to change their trade names at varying stages of development, including after having already opened their doors. Depending on how far along they might be in the process (For example, has signage been installed?), having to change trade names can be a costly undertaking.
Protecting the Brand and Products
A common issue in today’s brewery landscape is the sheer number of trademarks being churned out for each new brew. There is always a concern as to the availability of any new trademark being considered for use, but the craft beer industry can be particularly challenging, and a high degree of care needs to be given before using a trademark. This is particularly true when distribution for a particular new brew is likely on the horizon.
After registration of the trademark, a business should be sure to include the registration symbol—®—adjacent to the mark. In the United States, failure to use the registration symbol may limit the remedies that can be sought from infringers in a civil lawsuit.
Businesses must continually associate their trademarks with the relevant products or services within the context of the sale of those products or services to maintain exclusive rights.
Businesses are tasked with the duty to protect their rights by policing their trademarks to prevent weakening of the mark. In some instances, failure to police a mark can lead to the abandonment of all trademark rights in the mark.
Reserving a Trademark for Later Use
New brewery businesses should be aware that a trademark can be somewhat “reserved” for a limited period of time with the United States Trademark Office before they begin using the trademark if the applicant has a good faith intent to use the trademark in the future. In such a scenario, they might file an intent-to-use trademark application. This intent-to-use application will be examined in the same manner that a standard in-use application is examined, except that the specimen and allegation of use are submitted and reviewed at a later date.
Upon receipt of the Notice of Allowance for a particular trademark application, you will have six months to file the allegation of use or, in the alternative, file a request for a six-month extension. Up to five six-month extensions may be requested, which, if granted, ultimately “reserve” the trademark for up to three years post-allowance.
Trademark Registration and Your Logo
The ultimate goal for any brewery business is to build and develop a longstanding product that people enjoy. Many longstanding businesses face the reality of having to update their logo to meet current trends. While some changes to a logo absolutely require the preparation and filing of a new trademark application for registration of the new logo, there are certain changes for which the United States Trademark Office might not require a new application. Generally, these changes would have to be non-material changes.
When Not to Pursue Trademark Registration
There are a few instances where it might be advisable to not file a trademark application. One such instance is where the trademark is merely descriptive of the goods with which the mark is used in conjunction with. The Trademark Office will refuse registration of a mark that merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services covered by an application. For example, registration of “Hoppy IPA” for use in connection with beer would present challenges, as both “hoppy” and “IPA” are likely to be considered merely descriptive of beer.
Another instance where registration might not be advisable is for a brew that is only going to be available for a limited time, in which case it might not be financially prudent to file a trademark application. (But don’t forget that clearance search!)
Urgency Is Key
One of the bigger pitfalls I see businesses experience with respect to the trademark registration process is a lack of urgency. Some don’t realize that they can or should get started, while others simply don’t appreciate the potential risks in delaying.
I recommend exploring the possibility of registering a trademark as quickly as possible—either before or soon after the business starts using it. The sooner a company acts, the more protection its brand and products will have.
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