Step one: you made some darn good beer. But here is the kicker: that (relatively speaking) was the easy part. Beer is your passion, which is why of course you started a brewery. But what do you call it? Naming your brewery and your beer is a vital part of your business because those names will be how your customers find you, recommend you to their buddies, and rave about you online; that name is how you develop a following and a customer base that sustains the dream. But developing the brand idea is only step two; step three is making sure you can protect that brand. Which brings us to the importance of trademarking.
Trademarking shows ownership and validity of a brand, it provides protection against counterfeiting and infringing imports, it promotes settlement if someone else starts using your brand, and, if need be, makes for great evidence in court should it go that far. And that protection can be nationwide if done correctly. Importantly though, researching your potential brands before investing time, money, and emotional attachment can be key, and that is what we call trademark clearance. To begin, trademarks can be acquired in three ways: informally through use in commerce, or formally either by filing the appropriate paperwork at a national or state level. What that means for you is that before investing in a trademark you need to check all three. Remember though that there is no 100% guarantee that what you find is what you get; even the best research sometimes has things fall through the cracks. But trademark clearance is like a risk assessment tool, by completing a thorough trademark clearance you can get a good feeling for your level of risk in having your trademark denied by the powers that be and what future liabilities you could face (i.e. potential lawsuits).
So, the informal use in commerce trademark first. This is what we call gaining rights through the common law and it is established by actual use of the mark on the goods you want to protect that are for sale. This is where that TM sign comes into play because there is no need to register the mark to gain these rights. Unfortunately, that means if you want to clear the mark at this level there is no set database to browse. Instead go to the internet, start with Beeradvocate and Ratebeer to see if anyone else is using the name you like in the beer industry specifically. In terms of risk assessment, the use of same or similar marks on the same type of product has an increased risk of being confused by consumers since they are used for the same product. Risk in this situation is much higher than, say, if you had a mark similar to a brand of office supplies. Since consumer confusion is less likely, your trademark is more easily defended. But there is a lot of grey area between beer and office supplies, think energy drinks, teas, soda, spirits, and wine, which means that a good old fashioned Google search is in order. The risk in these areas is higher than that of office supplies but lower than with another beer. This common law protection is awarded first come, first served but is also limited to the geographic area in which the mark has been used (or in some cases areas that are deemed a “natural area of expansion”) and will not protect the markholder if someone in a completely different area starts using the mark. And remember, brand dilution can affect your business’ success heavily in the long term so try to think ahead distribution wise.
Another option is to apply for a trademark at the state level. In California, for example, your mark will be protected throughout the entire state if used on or in connection with your goods. This paperwork comes with a registration fee, and must be renewed every 5 years. Federal registration is also available and will protect your mark within all of the United States. Renewal at the national level is completed every 10 years (with a statement of continued use after 5 years). In this case, protection can be established, like before, by use in commerce or by filing an intent-to-use application that guarantees your place in line. For the federal protection, you can check the USPTO database (www.uspto.gov/trademarks). For state protection there a re a variety of databases that you can look through. In any event, be sure to check, not just for your particular class of goods (ie. beer), but also the sections for wine, spirits, bars, restaurants, soda, energy drinks, apparel, glassware, tap handles, paper goods (think coasters), etc. For both filings the powers that be will examine your mark and decide if consumer confusion is likely (and they will look at all of the above mentioned areas so be sure you do as well). If the answer is no, then your mark will be protected against anyone looking to use the same or a similar mark later on; if the answer is yes, then your mark will be denied and you need to start the process over. Granted, you may oppose a rejection if you like and in many cases it is even advisable (we would recommend some legal counsel in that situation).
If this all sounds like a terrible amount of work or you simply have questions about any of the above, please feel free to contact us. And with that, cheers and happy brewing!
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