With nearly 10,000 breweries operating in the United States, and countless beer brands available, trying to come up with an original beer name has never been more challenging. Knowing some basics about trademark law and how to protect your brands is no longer the province solely of larger breweries but all craft brewers.
Attorney Mark Traphagen agrees and sees an inevitable increase coming in the number of such disputes. “I think it’s becoming a crowded field and when a field is crowded, it’s always more likely that there’s going to be some sort of conflict between brand names, product names, and other trademarks,” he notes. Traphagen previously worked as an attorney at the United States Patent and Trademark Office (USPTO), the federal agency tasked with handling trademark registration for products and intellectual property identifications. Attorney Traphagen walks us through some basics of trademark law.
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In the brewing context, a trademark is a word, design, symbol, or anything else that serves to identify a beer or brand and distinguish it from other brewery beers and brands, says Traphagen. “Those can be words, designs, and can include things called motion marks, such as the swimming shark mark that Dogfish Head has been using,” he says. “All of those things can serve as trademarks.”
One of many common misconceptions about trademarks is that simply thinking of a brand or product name and putting it out into the public sphere secures it against other uses. Simply registering your company with the state in which you operate does not give you trademark rights. Similarly, registering a website or setting up a social media account does not provide a company with trademark protection.
This is a particularly important issue for breweries in planning, which should seek trademark protection for their names before they start serving beers.
A company can own and protect a trademark without registering it at the USPTO, though Traphagen cautions against this approach for brewers with any out-of-state sales aspirations. “The protection for an unregistered trademark is limited to the territory in which you are actually selling the beer or in which consumers actually recognize it,” he says. He points to a host of challenging and difficult to answer concerns for brewers holding so-called “use rights.” If a company lacks a registered trademark, parties have to determine where a brewery’s territory begins and ends against a competitor’s product.
Attorney Traphagen recommends what he calls the SIRE Method, which has four steps. “The first thing is when you’re choosing a trademark, whether it’s a house brand or a product name, have a search done to determine whether the mark is available for you to use and register and assess what risk you would run if you adopted it,” he says. “Second, insure your advertising and promotional activities to provide you with some protection if you’re accused of infringement. Many business liability policies have an advertising injury clause. If you are sued in federal court that may provide either the money from the insurer for you to pay for or reimburse for legal expenses for defending yourself. It may cost extra but it is money well-spent. The third thing is to register. A good way to be able to make clear that you have a protectable and valid trademark is to get trademark registration at the USPTO. If you’re going to enforce the mark or if you’re going to defend the mark, having a registration will send a message to the other side that you’re serious about your rights and that you’ve taken legal steps to protect yourselves. Lastly, and is less defensive and most offensive, is to enforce if you think people are getting too close to your mark.” He recommends breweries invest in some low cost options, such as having a trademark research service scan the marketplace every six months or every year to prepare a report for you to see where there may be problems. Or you can speak with your distributors to survey the market as well.