As seen on on November 29, 2012

Craft Beer™

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beer bottle and trademark symbol

The controversy over ongoing trademark disputes in the craft beer industry is widening. Oftentimes I hear people talk about how the beer industry is a tight-knit community, always willing to share and help each other. That is true, but I wonder if some of that is because the industry is still so small. As more craft breweries open, the business side of the community becomes more important and issues and legal disputes over branding and trademarking will–and have already–become more common. Longtime members of this great community seem split on how to handle it, as evidenced in recent comments regarding trademark disputes with Lagunitas and the Cascadian Dark Ale style.

Controversial attempts to trademark beer styles and terms show no slowing down, as evidenced by another ongoing legal battle between Steamworks Brewing owner Eli Gershkovitch and Colorado’s Left Hand Brewing over the term “Nitro.”

To better understand all the confusing lawyer speak and legal filings, I enlisted the help of the Craft Beer Attorney, Candace L. Moon, Esq.

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Steamworks (Vancouver, BC) trademarked the term “Nitro” relating to all beer related products in the United States in 2005. In 2011 Left Hand Brewing filed an intent to use application for the trademark “Milk Stout Nitro” but were denied because of conflicts with Steamworks’ trademark, thus Left Hand has petitioned for cancellation of Left Hand’s trademark. But what’s most interesting are Left Hand’s claims against the trademark that include “Fradulently obtained and maintained registration.” For instance, Steamworks applied for its trademark by showing that it was distributing bottles of beer using “Nitro” in the state of Washington, but there is no Washington state public record of registrants statement of sales in the Pacific NW, nor is there any mention of any “Nitro” products on Steamworks’ website.

“If Left Hand gets Steamworks’ trademark cancelled and theirs approved, then Left Hand will then own the word “Nitro” as it relates to beer, giving them the power to stop others from using that word in any beer names. “ – Candace Mooon, Craft Beer Attorney.

Left Hand Brewing Nitro Milk Stout label
Left Hand Brewing’s Nitro Milk Stout

If Left Hand is able to obtain this trademark, there may be a bit of a reckoning in the states over the use of the term “nitro.” It’s amazing that Guinness did not have this term locked down a long time ago. Thanks to insight from the Craft Beer Attorney, there may be an avenue for breweries possibly being affected by the trademark to pursue:

“There is a little known avenue that 3rd parties can utilize in these types of circumstances, called a Letter of Protest. There are some guidelines for timing, but it is a way for 3rd parties to communicate to the attorney examining a trademark that the mark is descriptive (or parts of the mark) and therefore should not be granted trademark registration as is. The option for the party applying for the mark would be to disclaim the descriptive word in their mark, therefore keeping the word available for others in the industry that should be allowed to use these descriptive words. The Letter of Protest is only available while a mark in under examination. Once a mark is approved, only parties who feel they would be damaged by registration can file an opposition (a proceeding post-approval but pre-registration) or cancellation (post-registration) of a mark.  Also, the Letter of Protest does not require a fee, while oppositions and cancellations do require a fee to the USPTO.”

While craft beer fans are no doubt getting sick of hearing about what some feel are petty disputes, they better get used to it. The bigger the business, the more claims we are going to see filed. The Cascadian Dark Ale fight in Canada shows no signs of letting up, and Portland’s Gigantic Brewing could even be pulled into the crossfire, as its Black Friday CDA is currently distributed in Vancouver, BC.

“If they distribute in Canada, Steamworks could possibly bring suit to have the products “deported,” I believe (again, Canadian law not my area).  If the situation were reversed (Canadian beer distributed to US), the brewery with a federal registration or common law rights would still have to file in court and convince a judge that consumers would be confused into thinking that beers called “Cascadian Dark Ale” came from the same manufacturer or source as Cascadia.”

At one point Steamworks did own the “Cascadia” trademark in the US, but lost it due to lack of use. This made me wonder weather there was an opportunity for an American brewer to trademark it here, too.

“There is already a trademark filed for “Cascadia Brewing Company.”  Someone could definitely try to file the style name, but the US Patent and Trademark Office does a relatively good job of researching the marks that come through (at least a Google® search), so it’s likely that even if the previously-mentioned mark didn’t block it, the USPTO would find the mark to be descriptive of the goods (beer) and therefore would not allow it to register. Although, some style names have managed to make it through the USPTO and become registered marks, but generally before those names became as common as they are now (and therefore as recognizable).”

This makes me wonder how long it will be before breweries start trademarking the next hot style names, like, say “White IPA,” “Gose,” or “Gratzer” before they become widespread in the US. Little known fact–Portland’s Burnside Brewing was originally going to be called Alchemy Brewing, but Widmer Brothers owns the trademark for “Alchemy” in relation to beer. Word is that you will start to see an “Alchemy” series from Widmer in the future to retain said trademark which requires use to be kept.

My last question to Candace the Craft Beer Attorney was if she had any advice for breweries in relation to trademarking.

“The best advice I can offer is to thoroughly research any brewery or beer names when choosing your branding. You also need to consider wineries/wines, distilleries/spirits, energy drinks, and even restaurants and bars as potential issues for trademark registration and possible litigation. You also need to consider more than the exact same wording, but similar wordings and even trademark ownership of one word. Aside from the USPTO trademark database, the TTB public COLA registry is a great resource for potential trademark issues since it covers the entire alcoholic beverage world. Foreign trademarks are another subset, but something to keep in the back of your mind. And try to be fair to your fellow brewers – don’t try to lock up words that everyone should be able to use.”

Here are a couple other comments from industry folks in response to my article posted Monday on the trademark disputes:

Chad S. Roberts – Brewer at Snipes Mountain
Lagunitas’ penchant for trademark enforcement has really given me a new perspective on their “anti-establishment” facade. Something really has to be done about this trademark nonsense, and soon. I’m getting more and more disgusted with our “community”.

Jay R. Brooks – Noted Beer Writer and Judge

It’s not up to you or me to decide if it infringes, that’s one of the flaws. It’s open to interpretation by the administrative courts that rule on these matters so what has resulted is that every TM holder HAS to protect their mark by affirmatively (meaning that have to send notice) to ANY similar sounding name that’s even remotely close. It’s supposed to be just within the same class of goods, but even that has been expanded and you see even more seemingly silly protections, but again, that’s what they have to do. If they don’t, some other more egregious infringement will use the fact that the company they’re infringing didn’t go after some other company as proof that their mark shouldn’t be protected in this instance. I don’t mean to sound harsh, but it doesn’t matter how silly these things sound to you, or me, or anyone else, that’s just what every business has to do under current law in this country. Unfortunately, the IPA analogy isn’t relevant, because nobody holds a trademark on “IPA,” unlike “Steam Beer.” And, again, I’m not trying to be difficult, but that’s not why we have labels. Labels are used to sell products and contain legally required information, as well as information they’re allowed to contain (meaning they can’t contain health claims about beer, for example). Two labels could just as easily be confusing, too, and there are plenty of instances where infringement claims have been made over the labels, too.

David Buhler – Co-Owner at Elysian Brewing
This is something all of us in a successful, growing, and national industry have to get used to. On one hand we “Elysian” have changed our Idiot Sauvan IPA to Savant IPA due to a trademark lawsuit. On the other hand, I have trademarked most of our beer names and to keep that trademark, a company has to consistently protect their trademark. While we have never sent a cease and desist notice, please don’t name a beer Dragonstooth :)

Ken Whiteman – Co-Owner at pFriem Family Brewers
I know that we filed an intent to use trademark on Cascadia Brewing Company when we were toying with that name for our brewery. It was granted by the USPTO, meaning they didn’t see any conflicts with other trademarks in our field of use. Even if we did pursue it, we wouldn’t even think about trying to prevent people from calling their beer a CDA. That’s ridiculous.
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