Brewer ALErt: To Build a STOUT Brand, Trademarks Should Be a PrincIPAl Concern Thumbnail

Brewer ALErt: To Build a STOUT Brand, Trademarks Should Be a PrincIPAl Concern

Beer drinkers often associate beer brands with catchy names or logos. Trademarks allow craft brewers to protect their brand by precluding competing brewers from using similar marks that are likely to confuse consumers about who made the beer. Owning a unique and recognizable trademark can have significant value. Developing a distinctive or memorable name in the beer industry, however, has become more difficult now that over 7,000 brewers are active in the United States. Protecting the mark and the corresponding recognition it brings a brewer is critical to its business.

Not surprisingly, given the increase in craft breweries, the industry is seeing an uptick in trademark disputes. They are arising in all facets of the beer world -- from brewery monikers, taglines, and logos to beer names.  Just a few weeks ago, the USPTO Trademark Trial and Appeal Board (TTAB) resolved a trademark dispute between Innovation Brewing of Sylva, NC, and Bell’s Brewery, Inc. of Michigan. Small brewer Innovation  sought to register the trademark “Innovation Brewing.” Bell’s opposed the registration, claiming Innovation’s proposed trademark was likely to cause confusion with Bell’s “Inspired Brewing” mark. The TTAB disagreed and dismissed the complaint finding that the marks are dissimilar in appearance, sound, connotation and overall commercial impression.

A battle over beer names recently concluded in Florida with no clear winner. Florida brewers Due South Brewing Co., Inc. and Big Storm Brewing Co. both sought to use the Saffir-Simpson Hurricane Wind Scale in naming their respective beers. Due South sent a cease and desist letter to Big Storm, claiming trademark rights to the terms “Category 3” and “Category 4,” which Due South used in naming certain beers. Big Storm, however, used the category ratings to describe the strength of its Belgian beers (i.e. “Category 1” for its Belgian Single, “Category 2” for its Belgian Dubbel, etc.).

Big Storm argued its use of the “category” ratings was not trademark usage as it is always used with the Big Storm name and never alone. Big Storm also argued that Due South always used the “category” ratings with its own name so there would be no confusion between the products. The case made its way through the federal court system but, after mediation failed, the parties dismissed the case in March 2017. Each brewery continues to market their respective “category” beers on their websites.

A recent trademark dispute over logos had a very different outcome. In June 2016, Denver-based Great Divide Brewing Co. sued Indiana-based Red Yeti Brewing Company, Inc. for trademark infringement over the use of a Yeti logo. Great Divide produces an imperial stout named “Yeti” which features a Yeti silhouette on the beer label. Red Yeti also utilized a Yeti figure in its brand marketing. Great Divide claimed Red Yeti’s logo too closely resembled Great Divide’s and would confuse consumers. To avoid litigation, Red Yeti changed its name to Red Foot Brewing, although it was permitted to continue to use the Yeti logo provided it did not appear on any label.

It is crucial for craft brewers to understand their trademark rights to protect their brand. Conversely, they must take proper steps to ensure their brand is not infringing on the rights of another. As illustrated, trademark disputes can come in all shapes and sizes and they do not show any signs of slowing down. Accordingly, craft brewers may consider the following in developing their brand:
  • Before adopting a name or logo, do a Google search to determine if someone else is using it.
  • Search the US Patent and Trademark Office trademark database and Ohio Secretary of State trademark database to determine if that mark is already registered.
  • Consider using a professional search firm to conduct a search before investing time, money and resources in a name or logo that you may ultimately not be allowed to use.
  • If other businesses are using the mark, consult with trademark counsel to determine whether you can use the mark in a non-infringing manner.
  • Periodically do searches to see if someone else is using your mark or one that is confusingly similar.  If so, consider whether that use is so geographically remote that actual confusion is unlikely. Might a co-existence agreement resolve the issue without litigation?
  • If someone else is using a confusingly similar mark, keep accurate records of actual customer confusion. For instance, if someone congratulates you for opening a new location that, in fact, is a competitor’s location using a similar name, document it. That is an example of actual confusion.
  • In the event you have a claim for infringement, act on it—you are responsible for protecting your own brand.  You may consider pursuing amicable resolutions outside of court first. Perhaps a friendly and inexpensive agreement can be reached by simply talking with the infringer. If things escalate, cease and desist letters can be effective. These can be contentious or good-natured.  Recently, Anheuser-Busch used a town crier to deliver a cease and desist letter (along with 2 Super Bowl tickets) to Modist Brewing Company for using the well-known “dilly dilly” phrase in naming its IPA. In doing so, Anheuser-Busch managed to protect its trademark rights and promote its brand while keeping the resolution lighthearted.
  • If an amicable resolution cannot be reached, litigation remains an option.
  • Maintain an open dialogue with your legal representative: the craft beer industry is ever changing and you should be vigilant to ensure your brand is being protected.
This brewer alert is for informational purposes only and not for the purpose of providing legal advice. Contact Frantz Ward attorney Greg Watkins or Colleen Murnane with specific questions for advice on a particular issue.

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