By: Farzad Panjshiri  [4/15/22]

With excellent craft beers, breweries have become highly popular in the Washington, D.C. metropolitan area and throughout the United States and are most often visited during spring, summer, and fall. The brewers regularly surprise their devoted craft beer communities with new beers while serving their popular classics every year. Creating a unique craft beer has become an art form, and craft beer communities are quickly growing. Selecting and protecting your brewery and beer names is essential to distinguishing and protecting your brand and avoiding confusion with other beers and brewers.

Find a Brewery or Beer Name

Finding a creative and catchy name for your beers and brewery (“beer mark”) is the first step. You can select as a mark a word, a design/logo, or a combination of both. There are no limits to your creativity in choosing a special mark for your craft beers or brewery. Your mark can be reflective, different, attract attention, themed to a specific topic, or just likable and fun. However, the most important factor is that the name or design is available and protectable.

Conduct a Trademark Search

A trademark search is critical to determine the availability of a brewery or beer name, especially in today’s saturated market. It is crucial to conduct a trademark search to determine the chance of success of a trademark application, reduce the risk of litigation, and not select a new mark after significant investment in a prior mark. Ideally, a trademark attorney should review and analyze the trademark search, as many factors need to be considered when reviewing results. Important to consider are factors such as “distinctiveness” and the “likelihood of confusion” with another brewer’s beer mark. It is critical to understand that the trademarks in the search cannot be confusingly similar to your mark and be used in the alcoholic beverage industry. Once the term or the design for the beer mark is clear, you can move to the next step and file a trademark application, if desired.

File a Trademark Application

Although applying to federally register your beer mark is not legally mandatory in the U.S., it is strongly recommended for various reasons beyond the scope of this article, but foremost to protect your mark nationally. Assuming you do want to register your beer mark, you can either file the trademark application by yourself or use the services of a trademark attorney. The success rate of the trademark application is raised significantly when a trademark attorney is used, and you may be hiring an attorney anyway to deal with certain federal regulatory issues related to the offering of alcoholic beverages (also beyond the scope of this article). In the application, you need to decide if you want to protect a name, a design element, or a combination of the two. You need to identify the goods and services for your mark, which will define the scope of your protection. This could be just a particular beer product, the brewery restaurant and bar services, or the like. You must also decide if you want to file the trademark on an “Intent-to-Use” or “Use-in-Commerce” basis. This is often a technical question best answered by a trademark attorney. For the latter, you have to provide proof that the mark is used in connection with the goods (beers) or services (beer making and brewing services for others).

Trademark Procedure

After the trademark application is submitted, an examiner at the U.S. Patent and Trademark Office (“USPTO”) assigned to your application reviews the trademark application and may issue an “Office Action” (an official letter of the USPTO). In the Office Action, the USPTO examiner points out possible issues on the application and can refuse your mark, inter alia, because of pre-existing confusingly similar trademarks. Alternatively, the examiner approves and publishes your mark. With the publication, third parties have the option to oppose your mark within an extendable thirty-day period if they believe your mark is confusingly similar or harms their mark in some manner. If no opposition is filed, your mark will register if it is filed on a “Use-In-Commerce” basis. If your mark is filed on an “Intent-to-Use” basis, you have to prove that it is being used in connection with the applied-for goods or services before the USPTO registers it.

Conclusion

Protecting your beer mark is crucial and should be considered for long-term brand protection goals. We highly recommend conducting a trademark search before filing and having it ideally reviewed by a trademark attorney. If you have questions or need assistance with the trademark search or filing, speak with one of our trademark attorneys to help you understand and guide you on what is best for your brewery. To learn more about Dunlap Bennett & Ludwig and how we assist you, contact us by calling 800-747-9354 or emailing clientservices@dbllawyers.com.


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Posted in: Intellectual Property, Intellectual Property - Trademarks

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