Brendan Palfreyman is a craft beer attorney with Harris Beach PLLC in Syracuse, NY and a member of the NYS Brewers Association. He also created and runs the brewery trademark resource website: www.trademarkyourbeer.com. A major focus of Mr. Palfreyman’s practice is representing and counseling craft breweries in New York State with regard to trademarks, corporate issues, real estate, and contracts. Brendan is an award winning homebrewer and has appeared as a guest on podcasts like Steal This Beer and Beer Sessions Radio. He is a dedicated and award winning homebrewer and filed the trademark for the folks at Milk the Funk. He even had a beer named after him by a grateful client – Palafrenero from Casita Cerverceria. bpalfreyman [at] harrisbeach [dot] com.
You’re running your brewery, you’re making beer, and things are going great. Then one day you receive a cease and desist letter. It probably says something scary like your use of a particular word or phrase constitutes trademark infringement and unfair competition which could subject your brewery to damages or treble damages, injunctive relief, attorneys’ fees, etc. My previous articles focused on the best ways to avoid this situation: proper trademark searching and federal trademark registration. This article focuses on what to do if you receive a cease and desist letter.
The first step is an obvious one, read and parse the letter carefully. Does the sender want your brewery to stop using a mark altogether, change something about your packaging, refrain from using the mark in certain geographic areas, or something else? It’s important to understand exactly what is being sought. Next, learn everything you can about the trademark that has been asserted against you. Is it a registered trademark or just a common law mark? If it’s a registered mark, is it on the principal or supplemental trademark register. Is it standard character mark (just the text) or is there a logo or font associated with the mark. Is part of the registered mark disclaimed? What product is associated with the asserted trademark, is it another brewery, an individual beer, a winery, a restaurant? All of these are important considerations in evaluating the strength of the potential case against your brewery.
Next, consider your own trademark. How does it compare to the mark asserted in the cease and desist letter. Are there differences in how the marks look or sound, or what they mean? For example, the marks RED HAIR and RED HERRING sound pretty similar but have very different meanings. Are the only differences between your marks descriptive words? For example, if you’re making a GREEN TREE IPA and someone else has a registered GREEN TREE BREWING COMPANY, you’re likely out of luck because courts and the USPTO are not going to focus heavily on descriptive terms like IPA and BREWING COMPANY and instead will focus on the dominant portion of the mark, namely Green Tree. Is there any defense that you might be able to raise to the allegation of trademark infringement? One example is the defense of descriptive fair use. If the use of the mark is purely descriptive, i.e., it just describes your product, it may constitute a fair use and be a defense to trademark infringement.
Finally, while there are occasions when legal issues can be handled without the help of an attorney, receipt of a cease and desist letter is not one of them. Because the issue is so important and because re-branding a single beer, let alone your entire brewery, can be a major hassle and expense, you really want to be sure you absolutely aware of your rights. It is easy to send such a letter and often times the sender may be relying on the fact that the recipient will just roll over and acquiesce. An attorney can help you sort out your rights and figure out what, if anything you have to do in response.
Please see www.trademarkyourbeer.com for more information about brewery trademarks. This blog is intended to provide general information on a wide range of issues, including legal issues, affecting the brewing industry. It is not intended to provide specific legal advice and no legal advice is given. You understand that merely using this blog does not create an attorney client relationship between you and any attorney at Harris Beach PLLC or Brendan Palfreyman. The blog should not be used as a substitute for competent legal advice from a licensed professional attorney in your state. This blog is intended to provide general information on a wide range of issues, including legal issues, affecting the brewing industry. It is not intended to provide specific legal advice and no legal advice is given.
