By Matthew McLaughlin
In our previous articles on trademarks, we explored the importance and necessity for a brewery to perform trademark clearance, or research, prior to either using a mark in commerce or attempting to register a mark. We will now turn our attention to the registration process so that you can have a better idea of what to expect from the United States Patent and Trademark Office (the “USPTO”) once you have filed an application for registration.
An application to register a trademark is typically examined by a trademark examining attorney about three to four months after filing the application. The examining attorney evaluates the application for compliance with legal requirements for registration of the mark. Also, the examining attorney conducts a search of Federal registered marks and marks subject of Federal applications to register.
Evaluating the Trademark Application
The examining attorney determines whether another mark exists such that the proposed mark if used for the identified goods and/or services of the applicant would be likely to cause confusion to consumers as to the association, sponsorship, or affiliation of the applicant’s goods and services with those of the owner of the other mark. If there are matters and issues to be resolved, the examining attorney issues an Official Action explaining the basis for any objections, informalities, or rejection of the application. The applicant has an opportunity to respond to the Official Action and seek to resolve the issues so that the application may proceed.
If the application is approved by the examining attorney, the mark is published for a period during which persons may object and oppose the application for registration. If no opposition is filed, the registration of the mark would issue in due course for an application based on actual use, barring unforeseen circumstances.
Intent-to-Use Process for Breweries
A notice of allowance would issue for an intent-to-use application. The notice sets a six-month period in which to file a statement of use. Subsequent six-month periods may be obtained by petition and payment of government fees. A showing of activities undertaken to make use of the mark is required for petitions subsequent to the first petition. The statement of use must be filed by the third anniversary of the notice or the intent-to-use application lapses.
Use of a trademark occurs by applying the mark to the goods or packaging for the goods (such as by keg collars, cans, and bottles) delivered in interstate commerce (across state lines) in the ordinary course of business. Service marks are used in the advertising for the services delivered in the ordinary course of business in interstate commerce.
The Importance of Trademark Registration for Breweries
Registering marks is critically important for breweries because federal trademark registration puts others on notice that your brand exists and is protected across the United States. Once your trademark is registered, it appears in the USPTO online database. Additionally, once your mark is registered, you can begin to use the registered trademark symbol ” ®” adjacent to your mark.
Finally, once registered a trademark may be maintained for as long as use of the trademark continues provided the owner files the requisite renewals forms. To maintain the registration, a registrant is required to file a Section 8 Affidavit of Continuous Use with the USPTO between the Fifth and Sixth Anniversary of the date of registration of the mark. Additionally, the registrant is required to file a Combined Section 8 Affidavit of Continuous Use and Section 9 Application for Renewal on or about every ten-year anniversary of the registration of the mark.
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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.