- Posted on: Aug 20 2019
The same reason a winery or distillery does. To get to the other side.
By Tom Dunlap
Tom is an attorney with Dunlap Bennett & Ludwig, one of the top trademark registrations firms in the United States – successfully registering more than 1,420 trademarks in 2018 for its clients.
[08/21/2019 Leesburg] Every brewer, distiller, and winemaker get that having an amazing name is almost as important as having an amazing bottle of booze, beer or vino. Likewise, the hundreds of breweries, wineries, and distilleries (we just call them collectively “drink makers” in this article – otherwise this will be cumbersome) enjoy coming up with pithy names for each particular beverage. The alcohol industry is one of the few places trademark attorney does not usually have to struggle to explain the value of the brand – sometimes it is even more important than the product! (Kidding? Sort of?)
So why then is it often difficult to get across the value of trademark registration? Here is what I think have seen – it’s about what you don’t know. You don’t know what you don’t know.
1. Use is King: Generally whoever was there first – whether they are using the name as a winery, for a bottle of beer, or distillery services is likely going to have the legal ability to keep others out of the marketplace. Once you have done a trademark search and determined that you are ok to use the mark, if you do not file a trademark, you are at risk of losing the right to do so in the future. Even if, for example, you are the first and original user of a trademark, if you only sell regionally and another brewery comes along and decides to file a trademark for a beer label name, they can then exclude you from ever distributing under that brand outside of the geographic area where you originally distributed. (You would have a very limited “concurrent use” right). Filing a trademark however gives you national rights in the trademark, forever as long as you pay the maintenance fees, which after the initial Section 8 and 15 filing, are only due every ten years. This is how Coca-Cola has had the same brand name since the 1800s.
2. Highlander Rule: There can be only one. Only one owner – generally of a name in the highly competitive environment of drink makers. If your brand is the same – or even close the same as any other drink maker’s brand- only one of you gets to keep it and use it. Until you have done a comprehensive trademark search and cleared the name you do not know if you actually have the right to use the brand name for your beer. This means you could be subject a cease & desist letter, and ultimately, a lawsuit if another brand owner takes notice. We send hundreds of these letters out every year for breweries, wineries, and distilleries (and receive them as well). The brand wars are no small thing. Note “search” does not mean “exact match” – more on that below.
3. Investment Value: Having a registered trademark allows the brewery owner to wrap their arms around the IP and create investment value. Every dollar you sink into a brand – whether it is a beer label, a vineyard name, or a distillery tour series – is a dollar potentially squandered if you don’t affirmatively own the brand. As I mentioned above – anyone can come along and either file a national registration either forcing you to change the name or, in the best case cutting off your rights to use the brand outside of where you originally distributed. A registered trademark proves to any subsequent purchaser that you have the right to use the brand.
4. Distribution. Once you file a US mark you then have a right under a treaty (called the Madrid Protocol) to file a corresponding mark in any other country relying on the US application. There are some nuances – but it is a very important right to combine with the US registration.
A note about trademark searching…
Many of our clients go to the USPTO’s trademark database – Trademark Electronic System Search (or TESS) -, type in their proposed brand name, see “no hits” and think – “Great!” However, the standard is much broader. The owner of a trademark owns quite a lot and, therefore, it is important to understand, at least in part – what a search needs to do. When you are searching for a trademark, you should be looking at other marks to see, if when you use your mark there might be a “likelihood of confusion” by consumers of your product or service “in the relevant marketplace”. This comes from the In Re Dupont case, that USPTO trademark examiners rely on to decide whether or not you will get a trademark.
The easiest way to explain it is by example:
Registered Mark: CouchBeer for “beer”
What would potentially be legally confusing under this broad standard?
CochBeer or CrouchBeer – Phonetically confusing
SofaBeer or CouchAle – Couch = sofa and ale = beer (yes beer folks – I know they are not technically the same – but for purposes of the trademark they may as well be!)
Searching: Most makers of drinks spend a lot of time and effort on labels and brand names on a beer by beer, wine by wine, booze by booze basis. Before you pay a lawyer to search – type the name into Google followed by the goods or services – such as “CouchBeer Beer” – see what hits you get and if anyone is using the brand. If you are satisfied generally then it is worth a deeper dive with a full search by a law firm or attorney to detect the phonetic equivalents and possibly other confusing marks.
Filing: The United States has a unique system (although Canada now has something similar) – that allows a brand owner to pre-register a mark and stake a claim on the USPTO principal register. This is done by filing an ITU or Intent to Use application ahead of the brand launch. This way the USPTO examiner can clear the brand before you start using it, subject to filing a subsequent statement of use. At the end of the day – I can’t overstate – how vital, central, and just plain important it is to register trademarks “early and often”.
For more information email Tom at firstname.lastname@example.org.