It's All About the Brand
“Hoppen Dazs” and “Mic Czech”. These are not just the names of two beers, they are both recognizable, distinctive and quite catchy brand names. Although the recipe of a good craft beer is what will ultimately bring the customers back, it is often the catchy, appealing brand name of the beer that attracts consumers in the first place and subconsciously persuades them to take their first sip. That is why, in the world of craft beer, the name of the beer, in many ways, is just as important as the beer recipe.
The chosen brand name is an integral part of the brewer’s brand, the identifying image that the brewer has worked so hard to create through marketing its products in the marketplace. Unfortunately, as is especially true in the craft beverage industry, many businesses spend a small fortune building that brand identity around catchy logos or brand names for the beer without first performing a trademark clearance search to determine whether they can actually use and/or protect their logos or marks as trademarks. Without performing this crucial first step, breweries not only risk having to re-brand at some point down the road, which is often a very costly endeavor, but they may also become the subject of a trademark infringement lawsuit, which can mean being put out of business.
To avoid such risks, breweries should first perform a trademark clearance search and then protect their valuable brand names and logos through trademark registration.
Trademark Search and Registration Benefits
The benefits of performing a trademark clearance search, and registering the mark, are both defensive and offensive.
Defensively, businesses want to use their trademarks without being sued for trademark infringement by others. Another business with priority trademark rights can demand that the newcomer “cease and desist” from using the infringing mark. That means the business must stop using the mark immediately and hope that the other business will not pursue damages in federal court.
Offensively, businesses may want to enforce their trademark rights against newcomers, who might otherwise copy the mark and use it to confuse and divert potential customers.
The trademark clearance process can, itself, be a costly investment, but can pale in comparison to the time and costs of having to re-brand later. Thus, the more businesses have invested or intend to invest in their trademarks in the form of advertising, the more beneficial it is to perform a formal trademark clearance search, and to register the mark. If the business owners decide to pursue a full trademark clearance search, they should consult with an attorney well versed in the field of trademark law to perform and analyze the search. rather than attempting to perform a trademark search on their own or even hiring an attorney who does not necessarily specialize in the field.
The Trademark Search
A trademark search is complex and involves more than searching the United States Patent and Trademark Office database for identical trademarks. Because trademark rights are acquired through usage of the mark, not registration, a proper trademark clearance search should include a search of the Internet, state incorporation databases, Internet domain names, state trademark registration databases, and trade publications. Even after having searched all of these locations, it is still possible to overlook the prior use of a confusingly similar trademark. That risk is unavoidable, but can be mitigated by a thorough, professional clearance search.
The resulting report should then be analyzed by someone who is highly knowledgeable about trademark law, such as a trademark attorney, who can provide a legal opinion regarding whether the proposed mark is registerable. Performing this level of diligence provides the mark owner with additional assurances as to the validity of his/her rights in the mark and can make the trademark registration process much easier, faster and less costly. It can also help a mark owner’s defense later if he/she is sued for infringement.
Assuming the proposed mark is found to be registerable, the next step is to apply for registration of the mark. Marks may be registered on the state and/or federal level. Although federal registrations with the United States Patent and Trademark Office ("USPTO") are often more expensive than state-level registrations, the protections offered through federal registration, including prescribed statutory damages in the event of an infringement and nation-wide constructive notice of one's ownership of the mark, are most often much more robust than the protections provided through state-level registration. For breweries doing business across state lines, federal trademark protection should be seriously considered.
In conclusion, successful branding can be a recipe for success, especially in the craft brewery industry. However, proper steps should be taken before using any band name or logo to ensure that no infringement of another's rights will occur. Once a distinctive and catchy brand name is found, breweries should consider protecting their rights in the name through either state or federal trademark protection.