The Trouble With Brewin’
The fierce competition for trademarks in the beer industry
Disclaimer: In order to access most of the hyperlinks in the article, you will need to be 21 or older. Sorry, folks. Those damn lawyers really screw everything up.
As a trademark attorney, I deal with a lot of interesting situations (at least, I think they’re interesting) surrounding brand names. Many times business owners will come to me with what they believe is a simple question: Can I use this brand name? Unfortunately it’s rarely that simple, especially in industries that have seen a recent surge in popularity such as the craft beer industry.
You see, trademarks operate by industries, which means the exclusivity an owner holds over a brand name only extends to the industry they use it in. To use the beer industry for example, there is a Somerville-based company called “Pretty Things”*, but there are also registered trademarks for “Pretty Fun Things,” (art prints) and “Pretty Yum Things” (perfume and lotion). In different industries, similar or even marks that are exactly the same can co-exist just fine. But when one particular market starts to get crowded, things get sticky; especially in a field like craft beer, where creativity and branding are highly valued. Having a creative name for your brewery isn’t enough anymore – each brew now has its own name, and each brewery has gone to great lengths to meld recognizable features of a beer with a pun or a back story that will get consumers interested and motivated to spend that extra dollar. Some examples of the more light-hearted names include 21st Amendment’s “Hell or High Watermelon,” Dogfish Head’s “ApriHop,” and, one of my personal favorites, Legacy Brewery’s “Hoptimus Prime”. For a valued backstory as part of a brand name, check out Dogfish Head’s “Midas Touch”, Night Shift’s “Art Series,” and Boston’s own Backlash Beer Company’s Apocalypse Series, consisting of Conquest, War, and Famine.** Intrigued? Of course you are. This is what good branding is all about, and why its value is extremely high in the industry right now.
*the registered trademark is technically “Pretty Things Beer and Ale Project, but for the ease of the example bear with me.
**there was meant to be a fourth, titled “Death,” that never came to market. It’s sad, but it makes one hell of a good story. But you’ll just have to go to their site to find out what happened.
Inevitably, this emphasis on branding leads to “disagreements” about which companies can use which names, and how close brand names can be. So I thought instead of boring you with the intricacies of trademark law, I would highlight some of the more interesting examples of some trademark debates that have come out in the last year or two.
In early 2012, this response letter from Freetail Brewing Company surfaced after they received a cease and desist from Steelhead Brewing Company over the term “Hopasaurus Rex.” In brief, to make a lawyer joke (actually, I already made one. Brief?? Get it!?) — I call that getting served. I printed it out and taped it above my desk for over a year as inspiration. Seriously though. It went viral because of the snark but it is actually a very well written response, and gets straight to the heart of the nuances of trademark use. In the CEO’s brief one and a half page letter, he points out that Steelhead’s claim is erroneous because they are claiming to use the term as the name for a beer, while Freetail is using it to identify a beer-making process. Totally different things, Freetail claims. And while the CEO later went on to explain the matter further in a blog, this letter is a great example of why these small nuances matter, and why lawyers can’t always answer the question “Can I use this brand name?” with an affirmative yes or no.
Another example was in March 2013 with a messy dispute between Ska Brewing in Colorado and DuClaw Brewing in Maryland, which highlights the necessity of early trademark registration (this is different from merely using it in the marketplace). Ska had apparently been making a pale ale under the name “Euphoria” since ’05, whereas DuClaw claimed use back to ’06 in their trademark application. But after DuClaw applied for a trademark with the USPTO, they sent a cease & desist to Ska. In response, Ska slapped a big ol’ trademark suit on DuClaw, claiming earlier rights — and won. See, when you file a trademark, you’re presumed to have superior rights – and if you’re defending with an unregistered mark, you have to prove those rights. Now Ska holds that registration in beer for “Euphoria,” DuClaw has a dead trademark, and both racked up a pretty penny in expenses. This is an example not only of the importance of early registration of trademarks (which, if Ska had done this, they would have largely avoided this entire dispute), but also a lesson for DuClaw in enforcement strategies when you don’t have superior rights to a trademark. (Interestingly enough, the article linked above notes that DuClaw had a history of naming their brews rather similarly to others and had received prior cease and desist letters themselves in the past.)
Finally, in May 2013, there were some rumblings between Oregon Brewing – brewers of Rogue Dead Guy Ale – and Rogue 24, a Washington-based restaurant. In this situation, Oregon not only has a brewery and a line of beer, but also has a public house and a USPTO registration for beer, restaurants and brewpubs. Rogue 24 cried foul and bullying, and it does seem that Oregon’s strategy was pretty aggressive, even calling for the transfer of the domain name. However, in trademark law the motto is often “use it or lose it,” which basically mandates that trademark owners defend their turf.
So, what do you think? I would love to hear your thoughts, entrepreneurs, brewers and beer drinkers alike:
- In the case of “Hopasaurus Rex,” is there enough market separation between using the same name for a beer and a brewing process?
- With “Euphoria,” should the first to register have superior rights? Did Ska misstep by failing to register first and then having to prove their rightful claim?
- And with “Rogue,” is one brick and mortar modernist restaurant close enough to derail a brewpub’s trademark?
Shannon is an attorney and co-founder of New Leaf Legal, a law firm serving entrepreneurs, socially-minded businesses, and artists. She lives in Watertown with her husband, 3 cats, and their shiba inu, Raiden.
PHFs include products with meat, dairy, baked goods with cream, custard or puddings, cooked pasta, rice, or beans, eggs, fruits and veggies, and pickled products, sauces, and relishes that need refrigeration. If your baked good uses dairy or fruits, but doesn’t require refrigeration once cooked, then it is likely going to be classified as a non-PHF.