Whether you are a fledgling entrepreneur finally realizing your dream of starting a craft brewery, or fine-tuning your next seasonal offering, you have likely invested significant time devising the perfect name or phrase for your brewery, label or offering. This chosen name is important to you. As well it should be. It defines your brewery and brand in a crowded marketplace by telling your unique story. And pretty soon you will invest a lot of time and money in reliance on that brand, so it ought to be just right.
But before committing your marketing dollars, time and energy, it would serve you well to consider: What could possibly go wrong? Of course, being the savvy business person that you are, you already know the answer: Your name could conflict with someone else’s name or label in the industry, or someone else’s name could conflict with yours in the future.
In the crowded craft beer industry of 2014, name conflicts, disputes and trademark infringement are a legitimate concern. A recent report by the National Beer Wholesalers Association (NBWA) indicates that U.S. brewery permits through July 2014 have exceeded 4,500. According to the Brewers Association, there were less than 90 breweries nationwide in the late 1970’s. That’s a 4,900 percent increase in the past 35 years! As of this writing, there are 173 breweries in Oregon alone (gratuitous pitch for Oregon craft beer). It is no wonder we have increasingly seen trademark disputes even in this cordial industry.
So what should you do? A good way to protect against any such conflict is two-fold: (1) Do your due diligence before selecting and investing in a brand name, and (2) As soon as you’ve made a selection, secure trademark rights.
Due diligence is all about research, research and more research. The sooner you do your research to rule the name in or out, the better. As a rule of thumb, if you have expended meaningful time or money on the name (as defined by you), it’s time to clear it for use.
It’s a good idea to start with your own Google search. Next you’ll want to search the industry websites such as BeerAdvocate.com, RateBeer.com and Taplister.com, to name a few. And you’ll want to clear your name with your Secretary of State (for Oregon, follow the link here: http://ow.ly/APXqV) and look into the searchable Alcohol and Tobacco Tax and Trade Bureau (TTB) and its Certificates of Label Approval (COLA) system (follow the link here: http://ow.ly/AQBug). Researching social media and domain registrations are also a good ideas. Last but not least, the United States Patent and Trademark Office (USPTO.gov) offers a search engine to look into filed and registered (live and abandoned) marks.
You could be amazed (and dismayed) that your brilliant, one-of-a-kind, name is already in use and it took you 30 minutes (or less) to rule it out. Back to the drawing board, but at least you haven’t ordered $2,500 worth of swag that will only serve as an instant tax write-off.
Assuming you are in the clear after your own due diligence, we recommend you hire an attorney (of course we do, we are attorneys) to complete an independent search (sometimes even an additional third-party search) of your chosen name across all platforms, including the USPTO. An attorney can also counsel you on whether any similar results that turn up may rise to the level of “likelihood of confusion” in the industry, and potential trademark infringement or dilution.
When you put your new name into commerce for the first time, you establish state common-law rights in that name. But those rights are not presumptive, and they are confined to your brewery or beer’s geographic reach. If you have any designs to sell your delicious offerings across state lines (i.e., interstate commerce), an attorney can counsel you on the proper trademark strategy (e.g., standard character mark and/or design mark; multiple G&S classes or not, disclaimers or not; selecting a filing basis, etc.) and file the mark to establish and protect your exclusive federal rights in all 50 states.
Upfront costs to research and establish these rights are no drop in the bucket, especially for a start-up brewery living the dream on a shoestring. But the peace of mind, and cost of not taking such prudent steps in a rapidly expanding craft beer industry, is difficult to overstate.