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.
After you file a trademark application for your brewery name or a beer name there are a couple different paths the application could take, not all of them good. This article will focus on some of those paths.
Office Action/Letter of Suspension
Applications frequently receive what are known as Office Actions. An Office Action, in its most basic form, is a letter from the U.S. Patent & Trademark Office (“USPTO”) rejecting a trademark application on either a non-final or final basis. There are several different reasons that the USPTO will issue an office action, the most common of which are likelihood of confusion, mere descriptiveness, geographically descriptiveness, and merely a surname. If you received any of these rejections, it’s important that you respond in the right way otherwise your application could be rejected or substantially limited in scope, such as by amendment to the Supplemental Registration. As such, you will likely need assistance if your application receives this type of substantive rejection. If you received a likelihood of confusion rejection, you’ll have to make arguments regarding what are known as the DuPont factors in order to prove to the Examining Attorney at the USPTO that there is no likelihood of confusion between your mark and the mark(s) raised in the Office Action. If you received a mere descriptiveness rejection, you’ll have to prove that you mark is not descriptive of beer, or whatever goods or services are claimed in your application. At a minimum, you have to prove that your mark is suggestive of said goods or services.
Office Actions also might raise less substantive issues, such as amendment to the description of goods and services or a requirement for a disclaimer of certain portions of your trademark. These issues should be taken seriously, as a disclaimer, for example, means that you hold know exclusive right to use that part of the mark. Disclaimers typically look like the following:
NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “BREWING COMPANY” APART FROM THE MARK AS SHOWN.
You may also get a Letter of Suspension from the USPTO. This type of letter is typically issued when the USPTO found a prior filed pending application that may raise a likelihood of confusion issue. The reason your application is suspended rather than rejected is that an application can only be rejected based on a registration, and the USPTO wants to wait to see that prior application matures into a registration.
Opposition/Cancellation/Request for Extension of Time to Oppose
If you receive an opposition or cancellation petition, a third party has decided it either wants to oppose your application or cancel your trademark registration. This, of course, is extremely serious and you will likely need assistance to respond. If you receive notice of a Request for Extension of Time to Oppose, it means that a third party is considering whether it wants to oppose your application and asked the USPTO for more time in which to file an opposition.
*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 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.
