When two breweries choose trademarks that may conflict, it is best for them to communicate early to avoid the costs of making changes in cans, labels, packaging, promotional materials, advertisements and loss of goodwill. Further, they both will want to limit the expense of engaging lawyers to deal with the dispute.
Changing the Mark
If the parties cannot work out a live-and-let-live arrangement, the best approach may be for one of them—presumably the one that adopted its mark later – to adopt a different mark to avoid the problem. Of course, before a proposed new mark is adopted, it should be cleared for any conflicting marks that either are in use or have been registered or applied for on the federal trademark register.
The parties may wish to try to resolve the dispute by entering into a consent agreement if they can specify rules for each party to follow to avoid a likelihood of confusion. To the extent possible, such agreements may establish concurrent rights in separate geographic areas, differences in the respective marks or their form of display, and differences in the products, their prices or their channels of distribution.
The U.S. Patent and Trademark Office (USPTO) generally believes that the parties know what is best for them, so it will allow both parties to register their marks in light of a proper consent agreement. But the USPTO has rejected consent agreements in at least two cases involving brewers using the marks shown below because those agreements were not considered sufficiently detailed in ways that would avoid confusion among ordinary beer consumers who, in the USPTO’s view, do not exercise care in making their purchases.
Alternative Dispute Resolution
If competitors cannot resolve a dispute themselves, they can agree to submit the dispute to a third party.
In either procedure, the parties must pay their own attorneys as well as the fees for the services of the mediator or arbitrator. However, they may save a bundle of money, and avoid the diversion of their energies, for things like discovery requests which can require answers to many and detailed written questions, searching for and providing all relevant documents, attending depositions, taking surveys and hiring experts. And the matter can be resolved in a matter of months, not years. The proceeding will not be public and the award generally will not be appealable to a court.
If all else fails, you may find yourself in a lawsuit. This can be very expensive and disruptive to your business opertions. You will have to go through extensive discovery, a trial and possibly an appeal, not to mention that it can take a psychological toll. Worse, you are leaving it up to an unknown judge to render a decision that will affect your business. Experience teaches that outcomes are unpredictable, even though the judge has to follow settled law, because trademark disputes involve a high degree of judgment in applying the law to the facts.
A good recipe to follow is “settle when possible, and fight only when necessary.”