Making Your Mark in the Craft Beer Business, Part One – Identifying and Protecting Your Trademarks

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According to the Brewer’s Association there were over 6,000 craft breweries operating in the United States at the end of 2017. In an increasingly crowded market, how do you ensure that the craft beer consumer is able to distinguish your brewery from your competitors? You should begin by identifying your trademarks.

A trademark is any word, phrase, symbol or design that uniquely identifies the source of one company’s goods from those of other companies. While the law in the United States recognizes a broad range of “source identifiers” as trademarks, most companies focus their intellectual property protection efforts on brand names, slogans and logos. Especially at the early stages of your business, it is important to focus your protection efforts on the essential elements of your brand. For example, your brewery may have a dozen regular varieties of beer, plus several small release or seasonal brews throughout the year. Seeking trademark registrations for each of your beers may quickly deplete your legal budget, and so a more focused approach is usually the best course of action. For most breweries, their primary protection efforts should focus first on their brewery name and logos, and then on the names of one or two of their flagship beers.

In the United States, a brewery’s trademark rights arise at the time it starts using the mark in commerce. This means that the first person to begin using a trademark in connection with the sale of beer owns that mark, and may be able to prevent others from using confusingly similar marks on beer and beer-related goods and services. That is, a registration with the United States Patent and Trademark Office (USPTO) is not necessary to own a trademark. However, these “common law” rights are limited in that they can only be applied to the geographic area in which you are selling your beer. Any business that is serious about protecting its brand should seriously consider applying for registration of the essential names and logos.

Some of the benefits that federal trademark registration provides to the trademark owner include:

(1) Preventing infringement problems before they begin by making your marks easy to find in a search of marks registered with the USPTO;

(2) Getting the USPTO to do a degree of enforcement on your behalf by preventing the registration of other marks found to be confusingly similar by the USPTO’s examiners;

(3) Giving you nationwide priority when your marks might otherwise be limited to the geographic area in which you are using the mark;

(4) Putting other companies on notice of your trademark rights so that they cannot claim that their subsequent use of your mark was in “good faith;”

(5) Creating a presumption of validity and ownership of your mark in the event that you need to sue another company for infringing your trademark rights;

(6) Providing the ability to recover treble damages and attorney’s fees in “exceptional” cases of trademark infringement;

(7) Providing the ability to recover statutory damages in cases involving counterfeiting;

(8) Giving you the ability to file for “incontestability” after five years of registration, which severely limits other companies’ ability to invalidate your trademark;

(9) Empowering Customs and Border Protection to block imports that infringe your trademark rights, including counterfeit products, once you record your trademark registration with Customs; and

(10) Granting you the right to use the ® symbol in connection with your beer, further putting your competitors on notice of your trademark rights.

Even if you’re in the planning process, and have not begun selling your beer yet, you may apply on an “intent-to-use” basis, meaning that you have concrete plans to begin using your mark in connection with the sale of beer. An intent-to-use application allows you to claim priority over other companies who might begin using your mark or a confusingly similar mark in the period between your application date and the date you start actually using the mark.

Keep in mind that you may not be able to establish exclusive trademark rights in a mark that is generic or descriptive of your products. For example, if you’re selling an IPA called “Hoppy IPA,” you will likely be unable to stop other breweries from using the name “Hoppy” in connection with their hop-forward beers. The “Hoppy” mark would be deemed descriptive because it describes a characteristic of the beer. The only way to establish trademark rights in a descriptive mark is to show that consumers associate the mark with your company. In the “Hoppy IPA” example, that means that consumers who hear “Hoppy” would need to immediately connect that term with your brewery.

On the other hand, you can reference a characteristic of your beer with a suggestive mark that requires consumers to use some imagination to connect your mark to the product. For example, consider Deschutes’ “Fresh Squeezed” mark for their IPA brewed with Citra hops, which alludes to the citrus notes in their beer. Stronger still are arbitrary names that have no direct connection to your beer or its characteristics (think “Stone Brewing” or “Rogue Ales”) or fanciful names you made up that have no literal meaning (like “Mikkeller” or “CANarchy”).

Stay tuned for Part Two of our brewery-focused trademark posts, in which we will discuss considerations regarding coexistence agreements.

Conkle, Kremer and Engel has assisted its clients in securing and protecting their trademarks for over thirty years. Whether you’re in the planning stages or already operating your brewery, contact Zachary Page or CK&E’s intellectual property team for help identifying or protecting your trademarks.

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The Conkle Firm Visits ISSE

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Attorneys from Conkle, Kremer & Engel were on hand as the Professional Beauty Association (PBA) hosted the International Salon and Spa Expo (ISSE) on January 28th-30th, 2017 at the Long Beach Convention and Entertainment Center.  Tens of thousands of industry professionals attended this year’s ISSE show, which featured booths and displays from hundreds of manufacturers and distributors.  CK&E attorneys were pleased to be able to assist clients and meet with professionals in the beauty industry.  CK&E attorneys particularly focus on helping beauty industry participants develop and grow their businesses, such as by expanding into overseas markets or negotiating with distributors. CK&E attorneys are proud members of the PBA, which advances the professional beauty industry by providing members with education, charitable outreach, government advocacy, events and more.

CK&E Attorneys Zachary Page, Heather Laird, Desiree Ho and Mark Riedel at ISSE

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The Conkle Firm Secures Summary Judgment in Published Trademark Decision

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A motion for summary judgment can be a cost-effective mechanism to efficiently resolve issues in a case by asking a judge to adjudicate certain claims or defenses before going to trial. Success on a motion for summary judgment can also reduce costs and improve outcomes by pushing the other side to settle on favorable terms and avoid the uncertainty and expense of trial.

Moroccanoil, Inc. and Marc Anthony Cosmetics, Inc., ended a legal fight over their trademarks and packaging after attorneys from Conkle, Kremer & Engel prevailed on behalf of Moroccanoil in a battle of competing summary judgment motions.

Marc Anthony’s attorneys filed several motions asking for summary judgment against Moroccanoil’s trademark and trade dress infringement claims while Conkle, Kremer & Engel brought motions for summary judgment on behalf of Moroccanoil to eliminate Marc Anthony’s defenses. While the court denied all of Marc Anthony’s motions, Conkle, Kremer & Engel’s motions successfully defeated almost all of Marc Anthony’s defenses before trial.

Marc Anthony Product Line

Marc Anthony Product Line

Marc Anthony argued that there was no likelihood of consumer confusion between the trademarks and product packaging, and attempted to strike at the heart of Moroccanoil’s brand by attacking the validity of the trademark in the Moroccanoil name and signature blue and copper orange colors. Marc Anthony claimed that Moroccanoil had improperly obtained registration for a name that was a “generic” name for argan oil, and that Moroccanoil had no ownership rights in common colors used for its packaging.

 

Moroccanoil Product Line

Moroccanoil Product Line

In a ruling recently published in the Federal case law reporter, Judge Dolly Gee of the Central District of California denied all of Marc Anthony’s motions, and issued significant rulings rejecting Marc Anthony’s attacks. Judge Gee specifically upheld Moroccanoil’s registration of its name and found that Moroccanoil’s trade dress is distinctive and protectable. Judge Gee also found that the majority of factors concerning the likelihood of confusion between the brands pointed toward trademark infringement. The case settled after Judge Gee’s opinion, without trial.

Judge Gee’s opinion, also published and available on Westlaw and Lexis: Moroccanoil, Inc. v. Marc Anthony Cosmetics, Inc., 57 F. Supp. 3d 1203 (C.D. Cal. 2014).

 

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Why Bother with the Supplemental Register?

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The United States Patent and Trademark Office (USPTO) maintains two different registers for trademarks: the Principal Register and the Supplemental Register.

To be eligible for registration on the Principal Register, certain marks, such as descriptive marks, surnames, geographic terms and certain types of trade dress, must acquire “secondary meaning.”  “Secondary meaning” means that public primarily sees the mark as identifying the source of the product rather than the product itself.  Registration on the Principal Register gives a mark’s owner several benefits, including:

  • Presumptions of ownership and validity;
  • Constructive notice to others of ownership;
  • The right to request that U.S. Customs exclude infringing goods from import;
  • The ability to claim “incontestable” status after five years of registration; and
  • The ability to obtain certain monetary and equitable relief in an infringement action.

Marks that are actually in use in the United States, but that do not qualify for the Principal Register because they have not yet acquired secondary meaning, may be registered on the Supplemental Register. As you might expect, registration on the Supplemental Register does not provide the same protection as registration on the Principal Register. For example, registration on the Supplemental Register does not create a presumption of ownership or validity; give others constructive notice of ownership; support a later claim of incontestability; imply an exclusive right to use the mark; or allow the mark’s owner to request that products bearing the mark be excluded from import into the United States.

So why bother with the Supplemental Register? The primary benefit of a registration on the Supplemental Register is that a subsequent application for a confusingly similar mark for related goods may be refused by the USPTO. The owner of a Supplemental Registration may also use the registered ® symbol on the products listed in the registration. Further, a registration on the Supplemental Register allows the owner to register the mark in other countries that offer reciprocal trademark rights. And, in the event that a Supplemental Registration’s owner is successful in an infringement action, the owner may be entitled to certain monetary and equitable relief that might otherwise be unavailable.

Given the relative advantages of ownership of a registration on the Principal Register, an applicant should always seek registration on the Principal Register first. But, if the USPTO refuses registration for lack of secondary meaning, an applicant should consider amending the application to the Supplemental Register to ensure the protections discussed above. Keep in mind that if a mark’s owner believes that the mark registered on the Supplemental Register has acquired distinctiveness, a new application for registration on the Principal Register is required.

Conkle, Kremer & Engel assists companies in all aspects of intellectual property protection, including U.S. and international trademark registrations and enforcement of trademark rights.

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