Craft breweries have become increasingly popular in recent years and there is no sign of this trend slowing down. Minnesota alone is home base for about 50 breweries, and according to the Brewers Association, there was an 81 percent jump in craft beer that is produced in Minnesota. (The New Yorker made a great map tracking craft beer’s rise to stardom).
However, this red-hot industry has created some trademark headaches when trying to name each new beer that is produced. In fact, it seems like there is a huge shortage of names, at least names that have anything remotely to do with beer. On top of the increasingly short list of available names, most brewers are not aware of their trademark rights or how to obtain a trademark, which only adds to the confusion. This has created a recipe for legal disputes between breweries.
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What is a trademark?
A trademark is a word, phrase, logo, sound or package that helps consumers identify a company’s product in the marketplace.
Will registering a company name provide trademark rights?
Many companies, brewers included, think that because the Minnesota Secretary of State lets them register a name for their company, that they then also have trademark rights. This is actually incorrect. The same is true for social media websites. Just because a company name is on Twitter, does not mean that it is a protected trademark. The company has to acquire the right to put the name of their brewery or the name of the brew itself on the product.
Does a brewer have to register its trademark with the USPTO?
Technically, no, a business does not have to register its trademark for protection. If a company begins to use a trademark on a product in the marketplace, they can sometimes be afforded protection. This is referred to as “common law” trademark protection. The largest caveat to common law trademark protection is that its rights are confined to the products geographical location. Since a lot of craft brews are regional only, this can create a headache when trying to determine where one region ends and another begins. This tactic would also prohibit a brewery from going national if there is a confusingly similar trademark in a different region.
So, what’s a brewer to do?
It is important for brewers to do their due diligence when picking a brewery name and brew name. The name was must be unique enough so it is clear that there is no overlap. Some preliminary searches can be done with beer related sources as well as a free search with the United States Patent and Trademark Office. Best practice would be select a unique trademark, do the required searches and then file it with the USPTO.
What protections are provided by federal trademark registration?
Per the United States Patent and Trademark Office (USPTO), benefits to federal registration are:
- Public notice of your claim of ownership of the mark;
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
- The ability to bring an action concerning the mark in federal court;
- The use of the U.S. registration as a basis to obtain registration in foreign countries;
- The ability to record the U.S. registration with the U.S. Customs and Boarder Protection Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol ®; and
- Listing in the USPTO.