In Part 1 of our Trademarks & Craft Beer series, we discussed what trademarks are and how you can determine if you eligable to receive one. In this post, we will dive deeper into how to actually receive a trademark and the steps that should be taken it enforce it.
How do you receive trademark protection?
A trademark qualifies for protection in two instances. The first and easiest way to receive trademark protection is to be the first to use the mark in commerce. Case law has interpreted the phrase “using the mark in commerce” as being the first person to sell your specific product to the public with your identifying mark on it. So, if you are the first to sell “Megahop Celebration” in connection with the sale of that beer, you will receive priority to use that mark over other future users. Unfortunately, the priority to use the mark is limited to the geographic area in which you sell your beer. So if you only sell “Megahop Celebration” in Indiana, and someone else comes forward later and starts selling the same beer in Oregon, it is unlikely that you will be able to prevent someone else from selling a beer with the same name in Oregon. Plus, because the United States is a first-to-file system, if the Oregon brewery files for a federal trademark before you do, you would be limited to only using “Megahop Celebration” in Indiana. So much for growing your brand.
The best way for a small business owner to prevent this issue from occurring is to file for federal registration of the mark with the United States Patent and Trademark Office (USPTO). A mark that is filed with the USPTO receives priority status over all other marks that were not previously used in the United States. Registration constitutes nationwide notice that the trademark is owned by the party that registered it. In addition to nationwide registration, any party that registers a trademark has the ability to bring suit in federal court and are able to recover additional damages not otherwise available.
The other benefit of filing with the USPTO is that you can file a trademark application to reserve trademarks that are not used in commerce. This type of filing is an intent-to-use application. This is a huge benefit for a new brewer beginning business plans to open a brewery because they can reserve a mark for the specific name they plan on calling their brewery or beer before spending large sums of money advertising the new brand.
Now that you have a mark, how should you enforce your trademark?
The final step in understanding trademarks is understanding how they are enforced. The trademark owner is responsible for conducting all enforcement. This process is extremely important because trademark enforcement (especially in the beer industry) has been blown up all over the news lately. If you do a quick google search you can find dozens and dozens of different anecdotal tales of one brewery enforcing their trademark against another (be on the lookout for an upcoming post on this topic). The news of these trademark disputes is often complemented with knee jerk reactions of beer connoisseurs on social media. In order to prevent any distasteful reaction, it is imperative to make sure that you have an artfully crafted enforcement policy.
If there is potential infringement an attorney would be able to walk you through the appropriate steps to take in order to take care of the action in a civil way. Sometimes a simple call to the other brewery’s legal counsel or owner can stop the infringer from using your mark, but in other situations further action may be necessary. However you choose to go forward with legal action it is important that you do so in a civil way.
Protecting your brand is important. Prior to selecting the name of your brewery or your next beer it is important to do a thorough job researching what names are already in use and what names are trademarked. If you have any experience dealing with trademark disputes or filing for your own trademark, please leave a comment, we’d love to hear from you.
ABOUT THE AUTHOR – CORBEN LEE
Corben Lee is an attorney at Gutwein Law. Prior to receiving his J.D. from the University of Notre Dame, he earned a BS in Management from Purdue University's Krannert School of Management. He focuses primarily on business law.