Bass, Berry & Sims attorneys Brian Iverson and Matthew Zapadka detailed the ins and outs of trademarking and brand protection for craft breweries in Beer & Brewing’s Spring 2019 Brewing Industry Guide.
More than 6,000 breweries exist in the United States alone, showcasing a rapid expansion in the industry. This quick growth has increased both the importance and obstacles for craft brewers in selecting and protecting their brand. Brian and Matt unpack some key trademark concepts and practical tips for craft brewers when determining and protecting their brand, including:
- How to acquire and keep trademark rights – To acquire trademark rights, a brewery must use a distinctive name in commerce as a designation of origin for its products.
- “Likelihood of confusion” test – The U.S. Patent and Trademark Office (USPTO) uses a “likelihood of confusion test” to compare trademarks for registration and courts use that test for infringement. For example, does one brewer’s name confuse consumers into believing they are buying a beer produced by a different brewer?
- Why parodies of names for craft beer labels are acceptable, but risky – When a trademark is strong, well-recognized and clearly associated in the consumer’s mind, the consumer is less likely to be confused because the parody is more apparent.
- Tips for brand selection – Brewers should select distinctive names as generic words and phrases are not protectable. Additionally, brewers should search to confirm that a new brand or product name does not create a “likelihood of confusion.”
- Tips for policing marks – Brewers should take steps to ensure that third parties are not using the trademark without their permission. The most common way to police a mark is through formal cease-and-desist letters, though these letters can often be viewed as aggressive.
“Careful brand selection will help avoid headaches down the road, and diligent brand protection will ensure that consumers always associate a particular mark with your brew,” Brian and Matt explained. “With the significant crowding the craft-beer industry and the increased challenge in competing for shelf space, the stakes are high, and craft brewers should consider consulting with experienced trademark attorneys at all stages of the process.”