Get Off my Lawn: How to Protect your Brand

April 27th, 2015 • by Colleen Raimond
Colleen Raimond

Colleen Raimond

My name is Colleen Raimond, and I work on the trademark team at Nixon Peabody LLP in Rochester, New York. We spend our days helping people protect their brands. We do that by learning about what folks do, determining if the brand they want is available, and figuring out what kind of protection works for them. Also, on a personal note, I really, really love craft beer.

In my last post I talked about how to go about finding your brand. In this one, I will be covering how to defend your territory. Once you’ve settled on a name (or symbol) that you love – and you’ve made sure it’s available – it’s time to start thinking about how to make it yours.

The first thing that you should know is that you don’t have to register your trademark to secure it (although there are benefits to doing that, which I’ll talk about below). In fact, once you start using it in commerce, you begin to build common law rights in the mark. To use it in commerce means, for example, that you’re selling, distributing, or transporting the brew with your brand on it or your brewing activities are regulated by the government (specifically, the Alcohol and Tobacco Tax and Trade Bureau).

However, if you’ve come up with the perfect name for your beer (and it’s available), but you are not quite to the point where you are selling beer under your brand, then the best way to protect your brand is through the trademark registration process. Specifically, you should file what is called an Intent-to-Use application (“ITU”) with the United States Patent and Trademark Office (“USPTO”). An ITU basically lets you call dibs on a mark that you are planning to use. The caveat is that you have to actually use the mark in commerce (within a certain period of time after filing the ITU) to gain protection, but once you do, the protection reaches back to the date that you originally filed. The intent to use filing basis is only available at the federal level.

Whether you are using your brand now or plan to launch soon, you should make sure you are protecting it. Some examples of ways to protect your brand are obtaining a website using your brand in the domain name and in the content of the site, creating a presence on social media, performing searches to make sure no one else is using your name, and/or registering it.   All of these are ways of letting people know that you exist. Getting your name out into the world makes it harder for people to accidentally use a name too similar to yours.

This is a good place to talk about some of the other benefits of federal trademark registration: registering your trademark with the USPTO gives you protection across the entire country (whereas just using the mark only protects you where you are selling your beer). So, when other people do a search of available marks with the USPTO, your name will pop up as already taken. Another advantage of registration is that it should block confusingly similar names from getting registered. Also, it gives the presumption that you are the true owner of the mark – stopping someone else from coming up with the same name somewhere else and registering it. Remember the Clown Shoes story I shared in my last post? If they had filed an ITU when they first settled on their mark, the other guys probably couldn’t have registered the name Clown Shoes was using.

So, while there are many ways to protect your brand and strategies for doing that are as unique as the breweries that employ them, just make sure you do something to protect your brand. You’ll be glad you did every time you crack open a can, wrestle the cap off a bottle, or pull a tap with your name on it to enjoy an ice cold glass of your own brand of frothy refreshing deliciousness.