The fun and whimsical (but crowded) landscape of beer names, part 2


Ed. Note: this is part 2 of 2

What’s in a name? Beer names can be funny, creative, and whimsical. But with the growing popularity of craft brewing, it’s getting harder and harder to find a name that isn’t already taken.

In Part 1 of our series, we looked at the basics of beer name branding and how to acquire brand rights. On tap in this article, pun intended, we will explore more legal considerations when selecting a name.

Select brands in an increasingly crowded field

One of the main purposes of trademark law is to prevent consumer confusion as to the source of goods and services in the market. To this end, trademark law protects the trademark owner against confusing uses of identical or similar marks by third parties who may mislead consumers into believing that there is an affiliation between the trademark owner and other user or confusion as to the owner’s potential sponsorship or endorsement of the other user’s goods or services. For this reason, the United States Patent and Trademark Office (the “USPTO”) will reject a federal trademark application for a beer name that poses a risk of consumer confusion with trademarks already registered in the Federal Trademark Register. .

The test used to determine whether a new brand, such as a beer name, creates a likelihood of confusion with a pre-existing brand requires consideration of a number of different factors. But the key question is whether the marks are confusing with each other, in terms of sound, appearance and meaning, when used in the context of the goods or services sold under the marks.

Most brewers would probably agree that it’s getting harder and harder to find legally available beer names. According to data published by the Brewers Association, the number of breweries in the United States has increased from 1,813 in 2010 to 8,884 in 2020. It is therefore not surprising to learn that there are approximately 32,000 active registrations and pending trademark applications covering beer filed with the USPTO. Of course, not all of them are about beer and brewery names. They also include the slogans, logos and designs mentioned above. But that only scratches the surface of the challenges a brewer faces when trying to select and protect a beer name.

The USPTO has always considered many beverages, including ciders, wines, liqueurs, and even energy drinks, to be closely related to beer. Indeed, for the major national brands at least, these products are often manufactured or distributed by the same companies and may appear in close proximity to each other on restaurant menus or grocery store shelves. As a result, the USPTO often denies trademark applications for beer names based on an alleged likelihood of confusion with prior registrations and name applications covering these other beverages. Worse, the USPTO sometimes denies beer names based on prior registrations or pending applications for bar and restaurant names, on the grounds that there is significant crossover between these industries. When you start adding up all the goods and services that the USPTO considers closely related to beer, the number of potentially conflicting trademark registrations and pending applications is likely well over 100,000. Given the high number of goods and services that the USPTO considers closely related to beer, it’s amazing that any beer name can still be registered!

Finally, the many breweries, wineries and other beverage manufacturers who use product names on an unregistered basis, but who may have prior common law trademark rights to a name in a particular geographic area, further increase the risk and complexity for craft brewers. For example, a brewery in North Carolina might spend time and resources federally registering a beer name only to find that it cannot sell beer under that name in Nashville, Tennessee, because of a local brewery that sold beer there under a similar but unknown name. at the North Carolina brewery until a dispute erupted.

Given the realities of today’s market, one can hardly blame a small brewery for not registering each of its beer names. It’s a fact that many brasserie menus change frequently. A small brewer may introduce a beer on an experimental basis, with no immediate plans to package or distribute it. It can then become a mainstay, only a seasonal offer, or be permanently discontinued in a few months if it fails. In contrast, it currently takes six months or more for many federal trademark applications to receive an initial review by the USPTO. A small brewer might wonder why they should spend the time and money filing a federal trademark application for a beer name that could be dropped before the application is even reviewed. Yet a close look at trademark availability and registration, even for seasonal names, often reveals significant issues that a brewery of any size would want to consider.

Fortunately, Brewers pride themselves on being people who, though competitive, are willing to help each other in a pinch and can usually resolve conflicts cooperatively. This attitude has historically extended to disputes over beer and other brand names. While some notable disputes have turned into litigation and made headlines, the vast majority are still resolved amicably, brewer to brewer, despite the crowded marketplace. Of course, conflicts can still arise with parties outside the brewing industry, who may not be so collegial. Moreover, even out-of-court resolutions will generally be more favorable to the party that held the superior and better-documented trademark rights from the start.

The bottom line is that due diligence is recommended when selecting a brand. The time and resources to invest in this due diligence and any legal protection sought really depends on the brewer’s plans for the product and the level of legal risk they are willing to accept. But if the brewer plans to invest a lot of time and money to develop and create value in a particular brand, it is worth the long term to also invest in thorough verification and protection of associated brands. This will reduce the risk of a trademark infringement issue which could result in the loss of the brewer’s investment in the brand, or even worse, liability to someone else for infringing their trademark. Perhaps more importantly, it will provide legal benefits for the brewery as it develops its unique, and yes, whimsical brand.

© 2022 Ward and Smith, PA For further information regarding the issues described above, please contact Norman J. Leonard.

This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or factual situation. No action should be taken on the basis of the information contained in this article without obtaining the advice of an attorney.

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