By Matt McLaughlin
In the first article of this four-part series on trademarks in the craft beer industry, we provided some definitional framework for trademarks for breweries. Fundamentally, trademarks are a form of intellectual property used to identify the source of goods and services. Put another way, trademarks are intended to identify the who and not necessarily the what.
Registering trademarks with the United States Patent and Trademark Office (the “USPTO”) can provide tremendous value to a brewery as it precludes another brewery from using a name or image that is substantially similar to the registered mark. Further, a well-rounded and protectable trademark portfolio increases the enterprise value of a brewery making it a more viable acquisition target or more valuable to transition to employees through a stock ownership plan.
For a designation to be a trademark under federal law and be registerable with the USPTO, it must be distinctive and used in interstate commerce. By definition, distinctive means the characteristic of one person or thing, and so serving to distinguish it from others. Implicit in the distinctiveness requirement is that a brewery perform some degree of research, or clearance, to determine whether a potential designation is sufficiently dissimilar to designations or trademarks of other breweries.
Best Practices for Brewery Trademark Clearance
Having worked with over 200 breweries (and distilleries) throughout the United States, we have counseled clients through an immeasurable number of issues with respect to clearing, and ultimately registering, trademarks. We have also developed a fairly streamlined process for handling trademark clearance that involves our clients performing some of the research in order to keep legal fees to a minimum.
Regardless of the degree in our involvement with respect to clearing a potential trademark, best practice dictates starting with a simple Google search. Once a brewery has come up with a name for its brewery or a name for its flagship beer, we always start with a Google search.
If a search through Google comes up clean, the next step in the process is to research similar marks on industry specific websites, namely Beer Advocate, RateBeer, and Untappd. If researching similar marks on industry specific websites comes up clean, the next step in the process is to search various social media sites, namely Twitter and Instagram.
At this juncture in the clearance process and assuming there are no issues with the desired mark, the brewery must perform a series of different searches using the USPTO TESS search. It is critically important at this juncture to involve a seasoned trademark attorney that also understands the craft beer industry as he or she will know what examining attorneys are looking for when it comes to the registrability of a potential mark.
Generally, we start with a simple TESS search to determine what registered marks exist across all goods and services. This provides a general roadmap of potential senior, registered marks that may prove problematic. If the mark in question is incredibly arbitrary or fanciful, no further searches may be necessary.
After running a simple TESS search, we generally run a series of structured searches analyzing the desired mark against senior marks that fall in International Class 032 for beer, as well is International Class 033 for other alcoholic beverages and International Class 043 for bar and taproom services. We also run a series of structured searches changing the literal spelling to phonetic equivalents of the desired mark.
Running structured searches and analyzing subtle nuances between a potential trademark and other senior marks can be complicated, but performing this diligence is critically necessary to increase the likelihood of registration. In addition, if a brewery decides not to register a particular mark, performing thorough clearance can reduce the likelihood of infringing on the rights of another brewery.
Want to learn more about trademarks and branding for your brewery? This is Part 2 in a series of articles focused on the importance of trademarks in the craft beer industry. Learn more about the Business of Craft Beer Certificate Program and Beer School short courses.
Matthew McLaughlin in addition to being an instructor in UVM’s Business of Craft Beer School courses, he is also the founding shareholder of McLaughlin, PC, a boutique corporate, commercial, and transactional legal and advisory firm and has worked with more than 250 breweries and distilleries in the United States. He also serves as the executive director of the Mississippi Brewers Guild and received the Brewers Association F.X. Matt Defense of the Industry Award in 2017.