This blog was originally written as a guest post for Indiana on Tap.
As most people know, the craft beer industry has exploded in the past ten years. In 2005, there were slightly less than 1,500 craft breweries in the United States. Now there are almost 3,500. The explosion has led to a craft beer renaissance, which consumers have greatly benefited from. Breweries have been developing new styles and coming up with names that will make sure you never forget the beer you just finished. Names like Osiris® or Zombie Dust® automatically take our mind to a hop island paradise. As the explosion of new brews crowds bar taps and shelf space, protecting brands has become increasingly important.
One of the best ways to protect your brand is to register your trademark. Doing so protects a brand’s reputation and it helps distinguish the quality of your libations from that of others. With only so many ways and names that you can coin the name of your beer it is imperative to choose a name that does not infringe on somebody else’s.
As a small business owner the stakes are high. At risk is the chance of spending thousands of dollars marketing a new beer to only find out that another brewery already has trademark rights to that name. To make sure that you do not make that mistake, this article will hopefully answer some questions that a new brewer or interested beer drinker might have about the ins and outs of trademarks, the process of obtaining one, and the strategy for enforcing it.
So, what is a trademark?
A trademark is any name, word, symbol, design, or any combination of those, used in commerce to identify and distinguish between goods or services from one manufacturer or seller and those of another. On any typical day, a consumer encounters thousands of trademarks, from driving through a drive-thru to purchasing a six-pack at your local bottle shop.
These trademarks are important for the beer connoisseur and the brewery owner. They provide recognition and assurances that what you are buying is what it says it is. For example, say you walk into a liquor store and you see a symbol on a beer that contains a picture of a landscape depicting three hills and a blue sky. You would most likely recognize that beer as coming from Upland® because you previously enjoyed drinking Campside®. If you purchased that beer because of the association you made between the logo and the source of the beer, and later found out the beer was not actually a product of Upland®, then you would likely be disappointed. To this end, trademarks benefit the consumer and the brewery because the consumer gets the quality of beer they wanted and the brewery gets the revenue generated by their brand’s previous successes (i.e. their goodwill).
Ok, you get that, but how do you determine if you can receive a trademark?
Prior to coming up with the next great name for your brewery or beer name it is important to hire legal counsel to perform a trademark search and give feedback on whether your trademark is distinctive enough to receive trademark protection. With a trademark search, an attorney will give you an idea of what other marks are out there and they will determine whether your mark is distinctive enough to obtain trademark protection.
A trademark’s distinctiveness will fall into one of four categories: 1) arbitrary or fanciful; 2) suggestive; 3) descriptive; or 4) generic. Depending on which category your mark falls into has drastic effects on whether your trademark will be eligible for registration and how much protection it will receive from courts.
The first category is a mark that is arbitrary or fanciful. A mark that is arbitrary or fanciful is a mark that bears no relationship to the underlying product. An example of a beer name that would be arbitrary is Hunter from 18th Street Brewery®. The word “Hunter” bears no relationship to a milk stout, but when someone mentions that particular beer your mind associates that beer with the high quality you’ve previously enjoyed from 18th Street Brewery®. Any marks that are determined to be arbitrary or fanciful are considered inherently distinctive and given a high degree of protection.
The next category is a mark that is suggestive. A mark is suggestive if it evokes or suggests a characteristic in the underlying good. For example, Hopslam® is suggestive of a beer that will pick up your taste buds and drive them into the ground due to the obscene amount of hops in the beer. Your mind needs to take an imaginary leap to associate the word with the underlying product. A mark that is suggestive is similar to an arbitrary or fanciful mark because it is considered inherently distinctive and is given a higher degree of protection.
The third category is a mark that is descriptive. A mark that is descriptive is one that simply describes, rather than suggests, a characteristic or quality of the underlying product. For example, Citra Double IPA, Bourbon County Stout®, and Double Citra all describe an aspect of the particular beer they name. Citra Double IPA and Double Citra both describe the style of beer and the type of hops used in the beer; Bourbon County Stout® describes the stout as barrel-aged in bourbon. Unfortunately, a mark that is descriptive is not inherently distinctive, but instead, the trademark owner must show that consumers already associate the brand with the source of their beer (i.e. their brewery).
The final category of marks are generic marks. A generic mark is a mark that describes the general category that the underlying product belongs to. For example, the term IPA (India Pale Ale) is a generic term that is now used to broadly describe hoppy ales. Therefore, a brewery would not be able to have an exclusive right to use that term with respect to those styles of beer. This makes sense because it would be unfair for a particular brewery to call their beer an IPA, and not allow any other to do so. Generic terms are not protected by trademark law because they are necessary for the consumer and brewery to identify the particular product.
Based on the distinctiveness of your mark, an attorney that practices trademark law will be able to give you feedback on whether your mark is likely to be registered prior to filing for registration.
Think you might want to register a trademark? Check out Gutwein Law's Intellectual Property Protection Plan, and don't forget to check in again for Part Two, in which we'll discuss receiving and enforcing your trademark.
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.
