To stand out in today’s growing craft beer market, a brewery not only has to brew great beer, but must also have a distinct brand. Consumers are faced with an unprecedented number of choices, and they use brands as a way to quickly cut through the clutter of crowded retail shelves and taps. A strong and unique brand makes a significant difference.
In 2011, there were 2,027 breweries in the United States. Today, there are more than 6,300 breweries, a staggering 300+% growth in just seven years. And the number of beer brands has increased even more, as each brewery typically brews several beers with different names. Not surprisingly, the number of trademark disputes involving breweries has also been on the rise. It has become a rite of passage for a brewery to receive (or send) a trademark cease and desist letter. Recently, Stone Brewing sued MillerCoors Brewing for trademark infringement over MillerCoor’s use of the term STONE on its KEYSTONE beer branding and packaging.
As a trademark owner, Stone Brewing needs to protect and police its STONE trademark, or else the mark will lose its ability to distinguish Stone Brewing’s beers from others. The mark could become weakened or diluted if other breweries were allowed to use the same or similar marks. To build and maintain strong brands, breweries must carefully pick, protect, and police their marks.
Picking Your Brand
Broadly speaking, a brand is a name, term, design, symbol, or any other feature that identifies one’s goods or services as distinct from those of other persons or companies. Trademarks are types of brands, such as the word RACER 5 on Bear Republic Brewing’s IPA or the gargoyle used on Stone Brewing’s beers. A brand is one’s identity in the marketplace. Used effectively, a brand will distinguish one beer from the thousands of other beers and beverages in the marketplace.
From a legal perspective, the strongest and most protectable brands are “fanciful” terms or invented words, like Ruckus Brewing’s HOPTIMUS, or “arbitrary” terms (an existing word or words that are not beer-related), like STONE. The next legally strongest marks are terms that are “suggestive” of beer, but do not directly describe beer, such as 21st Amendment Brewing’s HOP CRISIS.
In contrast, terms that are considered to be merely descriptive terms for beer (e.g., “hoppy”), that are generic terms (e.g., “ale”), or that are primarily a geographically descriptive term (e.g., “California”) are not considered inherently distinctive under the law and may not be protectable. Such terms often initially cannot be registered with the U.S. Patent & Trademark Office (USPTO). While descriptive and geographically descriptive terms can attain “distinctiveness” after years of substantially exclusive use, generic terms can never be exclusive trademarks. The USPTO has a YouTube video on selecting strong, distinctive marks at https://www.youtube.com/watch?v=z4jmtzR4_NU.
Of course, the main issue in selecting a brand is to determine if it is confusingly similar to an existing trademark. One can do a preliminary search for marks filed with USPTO by using its online database (www.uspto.gov, TESS database); however, the search functionality on that database is somewhat limited and is best used for a “knock out” search to exclude an obviously identical or substantially similar mark. For a video on how to use TESS, see http://www.youtube.com/watch?v=HI1qGwxYZ5s.
One should search other beer marks (in trademark class 32), as well as marks for other alcoholic beverages, restaurants and bars (trademark classes 33 and 43). The USPTO has typically taken the position that a mark used for wine or spirits will block registration of a similar mark used for beer. For example, in April 2018, the USPTO’s Trademark Trial and Appeal Board found that the mark VOLK PILS for beer was confusingly similar to the mark VOLK for vodka and refused registration of VOLK PILS. See In re Marshall Brewing Company, LLC, Serial No. 87019347 (April 9, 2018).
Other resources for conducting “knock out” searches for beer names are sites such as Untappd, Beer Advocate, RateBeer and the TTB’s COLA database at: https://www.ttbonline.gov/colasonline/publicSearchColasBasic.do. Keep in mind, however, that this is only a first step and deeper analysis will consider issues such as whether the mark is actually used, is a one-off product, or is packaged.
Consulting an experienced trademark attorney at this point is worthwhile. Some attorneys dabble in trademark law, but it is best to find someone who is experienced in this nuanced discipline. Skilled counsel may find less obvious similar marks or spot hidden challenges. Counsel may also recommend ordering a “full search” from a trademark search company, which will review thousands of business name databases, including the USPTO database, as well as the web and domain names. Failing to do a comprehensive search can result in wasted time, leading to future rebranding, or worse, litigation.
Beyond selecting a trademark, most craft breweries will also need federal and/or state approval for their labels. Breweries must consider other issues in creating a label, including the content (e.g., avoiding content that might be considered appealing to minors) and copyright issues (e.g., making sure you have rights to all artwork created for the label).
Protecting Your Brand
Once you obtain a mark, you need to protect it from others who may want to use the same or similar marks that could create confusion in the marketplace. In the United States, by using your mark in the marketplace you will start creating “common law” rights in the mark, but such common law trademark rights are limited to the geographic areas in which you market and sell your beers. Federal registration with the USPTO gives you distinct advantages and benefits in protecting and enforcing your rights. These benefits include obtaining nationwide rights, even though you may not be distributing your beer in every state, and a legal presumption that you own the brand. Filing a corporate name with the state, a fictitious business name statement, or even a state trademark registration does not give you such broad rights (though a state registration may give you protection in that particular state at least).
Notably, even if you have not begun using your mark, you can still file an “intent-to-use” trademark application with the USPTO to reserve your claim to the mark. You will not obtain a registration, however, until you actually use the mark with beer and file a Statement of Use.
You can file a trademark application yourself online at the USPTO website (see http://www.uspto.gov/trademarks/teas/initial_app.jsp) or hire an attorney to file the application, depending on your level of comfort with the process. The USPTO has a “Basic Facts About Trademarks” guide, which provides instructions and helpful times, see http://www.uspto.gov/trademarks/basics/BasicFacts.pdf. Some companies offer low priced searches and filing services for applications. Be careful about using these services, as some may not do effective searching or monitor “office actions” (discussed below) or other deadlines.
After an application is filed, the USPTO may issue an “Office Action” requesting more information or refusing registration of your mark for a variety of reasons, such as confusion with a prior existing registration or application. If you receive an Office Action, you may be able to respond to simple issues, but for more substantive issues you may want to seek the advice of counsel. Assuming you can overcome an Office Action and that no one opposes your application, then it should eventually proceed to registration. The whole process can take 10-14 months. After you have obtained a registration, you can use the circle R symbol ®. Prior to registration, you can use the superscript 
symbol.
Protecting your word marks are only part of the equation. If you have a distinctive logo, graphic or label design, then you may want to protect that logo or artwork just as you would your name, by filing an application to register it as a trademark and registering the copyright in the work with the US Copyright Office.
Another important step in protecting your brand is registering appropriate domain names and social media handles. Keep in mind that obtaining a trademark registration does not necessarily give you superior rights to the corresponding domain name or social media user name.
Policing Your Brand
As a trademark owner, you must “police” your brand, monitoring for others who may be using confusingly similar brands or logos, to prevent potential confusion in the marketplace or dilution of your brand. Monitoring can include periodic Internet searches, subscribing to a trademark watch service, and simply keeping tabs on the marketplace. If you find a mark that may infringe your rights, you should take action, but this does not necessarily mean sending a cease and desist letter or filing a lawsuit right away. The craft beer industry is a collegial one, and many disputes can be worked out informally.
In some cases, however, sending a cease and desist letter or proceeding to litigation is necessary. You can oppose pending published trademark applications by filing a Notice of Opposition with the USPTO’s Trademark Trial and Appeal Board (TTAB), but there are tight timelines to do this and using counsel is recommended.
Conclusion
As the craft beer industry continues to grow, it has become increasingly important for craft breweries to carefully pick and protect their brands. Doing the hard work up front to search trademark databases and register your trademarks can save time and money later.
Eugene M. Pak, Chair of the Intellectual Property Practice at Oakland, California law firm Wendel, Rosen, Black & Dean LLP, leads the firm’s Craft Beer practice and tweets as @BeerAttorney. He can be reached at epak@wendel.com