How To Protect Your Valuable Craft Brew Brand
In the craft beverage industry, often times, the brand name is just as important as the beverage recipe. If you have ever sorted through a menu of newly offered craft beers, you know that you often select the one with the most distinctive name, like, “Hoppen Dazs” and “Mic Czech” (real craft beer names I might add); and although it is ultimately the quality and appeal of the recipe that may bring you back for more, it is the name that initially draws you to the beverage.
That name is an integral part of the brewer’s brand, the identifying image that the brewer has worked so hard to create through marketing its products in the marketplace. Unfortunately, as is especially true in the craft beverage industry, many businesses spend a small fortune building that brand identity around catchy logos or brand names before determining whether they can actually protect their logos or marks as trademarks. Failing to first determine whether the logo or marks may be protected trademarks, businesses risk having their marks copied by competitors or infringing upon another business’s trademark rights…talk about a buzz kill.
So, how do businesses prevent competitors from copying their marks, and how do businesses avoid unlawfully using the trademark of another business? Answer: by performing trademark clearance searches and registering the trademarks with the appropriate trademark registration agency. Since craft beer has a national market, it is assumed for purposes of this article, that the mark owner will protect a mark nation-wide rather than just state-wide, and thus, will apply for a federally protected mark with the United States Patent and Trademark Office.
Trademark Search and Registration Benefits
The benefits of performing a trademark clearance search, and registering the mark, are both defensive and offensive.
Defensively, businesses want to use their trademarks without being sued for trademark infringement by others. Another business with priority trademark rights can demand that the newcomer “cease and desist” from using the infringing mark. That means the business must stop using the mark immediately and hope that the other business will not pursue damages in federal court.
Offensively, businesses may want to enforce their trademark rights against newcomers, who might otherwise copy the mark and use it to confuse and divert potential customers.
The trademark clearance process can in itself be a costly investment, but can pale in comparison to the time and costs of having to re-brand later. Thus, the more businesses have invested or intend to invest in their trademarks in the form of advertising, the more beneficial it is to perform a formal trademark clearance search, and to register the mark. If the business owners decide to pursue a full trademark clearance search, they should consult with an attorney well versed in the field of trademark law to perform and analyze the search. rather than attempting to perform a trademark search on their own or even hiring an attorney who does not necessarily specialize in the field.
The Trademark Search
A trademark search is complex and involves more than searching the United States Patent and Trademark Office database for identical trademarks. Because trademark rights are acquired through usage of the mark, not registration, a proper trademark clearance search should include a search of the Internet, state incorporation databases, Internet domain names, state trademark registration databases, and trade publications. Even after having searched all of these locations, it is still possible to overlook the prior use of a confusingly similar trademark. That risk is unavoidable, but can be mitigated by a thorough clearance search.
Furthermore, merely searching for identical marks is insufficient, because marks that are “confusingly similar” to the proposed mark are as much a litigation threat as identical marks. For example, courts have found the marks JOCKEY and ROCKE to be confusingly similar. For this reason, a thorough trademark search for confusingly similar marks should include the use of a professional trademark search firm, with access to all of the most commonly used databases, and the knowledge required to formulate appropriate search queries.
The resulting report needs to then be analyzed by someone who is highly knowledgeable about trademark law, and preferably by a lawyer who will give a legal opinion regarding whether the proposed mark can be registered with the Trademark Office. Performing this level of diligence provides the mark owner with additional assurances as to the validity of his rights in the mark and can make the trademark registration process much easier, faster and less costly. It can also help a mark owner’s defense later if he is sued for infringement.
In conclusion, while branding is crucial to the success of a business, launching a brand can be quite costly. Furthermore, launching a brand without first searching for confusingly similar marks already being used in the marketplace can result in numerous risks for the business. For that reason, business owners are strongly encouraged to consult with a trademark attorney, knowledgeable in the field, to perform a full trademark clearance search and help the business register the mark with the appropriate agency prior to the business’s use of the mark in commerce. Such protection up front can save countless dollars, time, and aggravation in the end.
This blog was written by Hank Abromson at Miles & Stockbridge.
Opinions and conclusions in this post are solely those of the author unless otherwise indicated. The information contained in this blog is general in nature and is not offered and cannot be considered as legal advice for any particular situation. The author has provided the links referenced above for information purposes only and by doing so, does not adopt or incorporate the contents. Any federal tax advice provided in this communication is not intended or written by the author to be used, and cannot be used by the recipient, for the purpose of avoiding penalties which may be imposed on the recipient by the IRS. Please contact the author if you would like to receive written advice in a format which complies with IRS rules and may be relied upon to avoid penalties.