Selecting a Protectable Brewery or Beer Trademark with Appeal

May 14th, 2018 • by Bob English
Bob English

Bob English

    Bob is a Partner in the Trademark Group at Cowan, Liebowitz & Latman, P.C., a leading intellectual property law and litigation firm based in New York City for over 60 years specializing in protecting and enforcing rights under trademark, copyright and patent law. Bob is a life-long craft beer enthusiast and industry supporter who knows the legal issues faced by craft breweries and businesses servicing the craft brewing industry. He has extensive experience with domestic and international trademark prosecution and enforcement matters, and regularly advises start-up craft breweries and other beverage, food and hospitality brands, both small and large.

    When you select your brewery name or your beer trademark, keep in mind two principles:  (1) choose a mark that is legally strong, and (2) choose a mark that is not confusingly similar with someone else’s existing name or mark.

    Strength

    Of course, you want to select a term that is appealing to customers.  It is tempting to select something that is self-explanatory like a generic or highly descriptive word.  But a generic term can never become exclusive to anyone, and a descriptive term or surname can only become exclusive when it can be shown that the majority of consumers recognize that term primarily as indicating the product’s origin.  This can also apply to a geographic name that is somehow related to the product.

    A brewery went the descriptive route when it tried to register Vanilla Java Porter for guess what.  The Trademark tribunal refused registration even after 10 years of use, $5 million in retail sales and $250,000 in advertising.

    So what should you do?  Make up (or coin) a word that sounds interesting, such as Sombronkey.  Use a pleasing word that has nothing to do with your product but is appealing from a marketing perspective (an arbitrary word), such as Moustache, Tree House or Surly.  Or choose a word that suggests something about your product but does not merely describe a characteristic of it (a suggestive word), such as Euphoria.  These types of mark can be exclusively claimed right away.

    Existing Marks

    It may be tempting to use a variation of an established brand, even if it is for another beverage or a restaurant or bar, but don’t do it.  For example, well-known Mirassou wine successfully prevented registration of Mirosa for beer.

    Also, expensive legal costs can result from the unauthorized use of a famous person’s name, like Thelonious, or even a close variation of the name of a fictional character, compare Radacast (The Hobbitt character) with the mark Radecast for beer.

    Searching

    To avoid such issues, arrange for an availability search of the proposed mark.

    First, see if you knock it out by doing your own Google, the NYSBA AppRateBeer, Beeradvocate and Untappd searches, and if you don’t find it, have your attorney do a quick look at the relevant federal trademark applications and registrations.  Your attorney may also recommend a comprehensive search from one of the established service companies before providing you with an availability opinion.

    If you choose a mark that has legal strength as well as marketing strength, you may avoid an unintended headache and the cost of changing your mark after you launch.