Resources

A Designer & a Lawyer Walk into a Brewery

Creating and protecting a compelling brand

In May, we had the pleasure of flying out to California to present at the California Craft Brewers Conference with Alesha Dominique, a Partner and IP attorney from Mitchell Silberberg & Knupp. Our talk centered around the brand strategy and intellectual property issues breweries run into on a daily basis and how they can take practical steps to establish a strong, effective, and protectable brand built for the long haul.

Since the talk was standing room only, we figured this topic was valuable to a larger audience. Below is a continued conversation between Alesha and I on some of the topics we covered in the talk itself as well as some of the great audience questions we received during the Q&A. Whether you’re a brewery in planning or have been open for twenty years, you would be wise to heed Alesha’s advice.

QUESTION 1:

There’s a growing trend of breweries naming beers after popular film, television, music properties and celebrities. What are the branding and legal issues that can arise from this?

Alesha: While incorporating elements from popular culture into a brewery’s brand may be an appealing way to market beer and expand one’s customer base, it can have a number of unfortunate, and possibly unintended, legal consequences. Often, the appropriated material is protected under trademark, copyright, right of publicity, and/or unfair competition laws that prohibit the unauthorized use of such material subject to a few exceptions. Using material from popular culture without authorization could expose a brewery to a long and expensive legal battle that disrupts its business, and ultimately takes the brewery’s focus away from its likely primary goal—making good beer. It is often not worth that risk!

Isaac (CODO): I’d dive into the ethical issues of stealing intellectual property, but the legal ramifications Alesha laid out are probably more important and immediate. That being said, we’ve found most breweries to be blasé in their approach to this (“By the time we receive a C/D, the beer will be long gone!”). Even if you think this way, you should consider what a particular name says about your brewery’s brand? Does it help to tell a larger narrative? Through branding, you’re working to differentiate yourself and tell a unique story. Beyond the quick smirk a witty name may receive, how does it further enmesh your beer in people’s lives?

Some of the more egregious intellectual property examples we’ve seen lately.

QUESTION 2:

What happens when a brewery uses a name that turns out to be registered by a brewery in another region? Or, what happens if neither brewery has registered the name, but are still using it?

Alesha: There are a number of issues that could arise if a brewery uses a name that turns out to be registered by another brewery in another region. Determining which brewery was the first to use the name in connection with a particular good or service, will typically determine which brewery has priority to use the mark and the geographic scope of that use. For example, if a California brewery is the first to use (but does not federally register) a unique beer name in a specific geographic location, and a New York brewery later uses and receives a federal trademark registration for the same beer name, the California brewery typically will have priority rights to use the unique beer name in the specific geographic location in which it used the mark prior to the date on which the New York brewery filed its trademark application. If, on the other hand, the California brewery did not use the unique beer name until after the New York brewery filed its trademark application, the New York brewery will typically have senior rights to use the mark nationwide, subject to a few exceptions.

If neither brewery has registered the unique beer name, but both are still using the name in their respective territories, the breweries typically will have priority rights to use the unregistered beer names in their specific respective territories. If those territories overlap, an analysis must be undertaken to determine which brewery was the first to use the mark in commerce in the overlapping territories.

Isaac: We insist our brewery clients knockout search any names that will end up in packaging. Plan for every beer you brew to be wildly successful and cross state lines and be seen by the world. Federally trademark your brewery name, flagship names, and any other events, podcasts, etc. There are too many breweries making too much beer to be lazy about this anymore.

 

QUESTION 3:

Brewery brand extensions are on the rise (seltzer, cold brew coffee, kombucha, CBD-infused beverages)—can you speak to the branding and legal considerations for using your brewery’s name in one category versus another?

Alesha: From a legal standpoint, when a brewery is contemplating extending its brand to other products and/or service lines, it is often important to undertake a trademark clearance search in an effort to determine whether the brewery’s existing or new trademarks are available for use and/or registration in connection with the new product and/or service lines. One cannot assume that just because a trademark is available for use in connection with beer, it is also available when used in connection with cold brew coffee. In addition, breweries should police their trademarks against unauthorized and/or confusingly similar uses, which can become difficult to monitor as their product offerings expand. It may be helpful to enlist the services of a third party to assist in monitoring unauthorized and/or confusingly similar uses of the expanded product and/or service lines.

Isaac: A couple quick definitions: a Brand Extension occurs when an existing brand launches a product into an entirely new category under a similar or same name (brewery opening a distilling company, for example). You’ve won over customers with a great product and killer service… Why not cash in on all that goodwill and ask them to try something new that carries the same promise of value?

A Line Extension is where a company lends an established, brand-specific name to another product within the same category (“Popular Flagship” IPA begets “Popular Flagship” Grapefruit IPA begets “Popular Flagship” Milkshake IPA, etc.).

When you’re considering an extension, you need to consider your broader brand architecture to see if what you’re thinking about adding the mix will fit in and effectively supplement your parent brand, or if it will dilute or perhaps even cannibalize your overall brand. Beyond this, you need to consider if it makes sense strategically to add your name to another category. Example: A brewery making kombucha or cold brew coffee sounds fair. If you can make great beer, those other two don’t seem too far out of left field. But can your brewery come out with its own line of sunscreen? Probably not (unless you’re beach themed?).

Modern Times has done a fantastic job of extending their brand into other categories.

QUESTION 4:

Can you speak to some of the branding and legal ramifications of using a specific geographical name for your brewery name? Can you even do this?

Alesha: While using a specific geographical name in a brewery name (or a portion of the name) is often possible (subject to a few exceptions), a brewery’s ability to obtain a federal trademark registration and/or to enforce its rights in the name against potential infringers may be extremely limited absent a showing that the mark has acquired distinctiveness (a descriptive mark acquires distinctiveness when prospective purchasers perceive it as a designation that identifies the particular goods/services rather than as simply a descriptive term). From a trademark registration standpoint, the U.S. Patent and Trademark Office (“USPTO”) can refuse to register a mark that is “primarily geographically descriptive” or “primarily geographically deceptively misdescriptive” of the goods or services named in the application, absent a showing that the mark has acquired distinctiveness.

In addition, if a brewery uses a specific geographic location in its name, it may have difficulty enforcing its trademark rights against another brewery that is using the identical or a similar name to describe the specific geographic location from which its beer originates, absent the brewery making a showing that its name has acquired distinctiveness. This is because the law generally allows business owners, including breweries, to properly describe the origin of their goods and/or services.

Isaac: Owning a city or town name is an amazing opportunity because you can effectively attach your name to all the great progress your community is making.

However, we’ve worked with a few folks around the country that have done this and have seen an annoying negative (beyond the important stuff Alesha outlined) come from it: you have to police your trademark to maintain it. And when you’re “XXXBIG CITY NAME BREWING CO.,” you will find lots of breweries in your city or state using similar names for their corporate or beer names (Austin Beer Works, The Austin Beer Garden Brewing Co., etc.). This puts you in a tenuous position where you have to be a bad guy and tell them to stop (so that you are effectively policing your trademark). This means no matter how community-minded and magnanimous you are, you have to be the bad guy. And that doesn’t fly well in this industry.

If you’re still working through naming your brewery, think beyond your town itself. Here’s a quick look at how you can find another angle to explore.

Imagine how many breweries in Atlanta use their city’s namesake for beer names.

QUESTION 5:

Beyond a corporate name, specific beer names and a logo, what other elements can a brewery trademark and protect?

Alesha: Federal law defines a trademark as “any word, name, symbol, or device, or any combination thereof” that identifies and distinguishes goods and indicates source. Accordingly, the USPTO and federal courts have found that even nontraditional source identifiers can function as trademarks, including product packaging, shapes, scents, sounds, and colors. Accordingly, a brewery should consider seeking broader trademark protection in connection with its product lines, if at all possible.

Isaac: At a minimum, we insist that our clients trademark their corporate name, flagship names, and any brand identity marks we create.

 

QUESTION 6:

How early can you, and should you register a brewery name or logo? Can you protect your logo and name for a few years while you get your brewery started?

Alesha: While a brewery can file a trademark application for a name and/or logo once it is using the trademarks in commerce, it can also file an intent-to-use trademark application if it has a bona fide intent to use a brewery name and/or logo in commerce but has not yet started using the mark. In such instances, a brewery is permitted to file an intent-to-use trademark application for the name and/or logo which will give it time to bring its product and/or services to market. While a trademark registration will not issue until the brewery actually commences use of the mark in commerce and shows evidence of the same to the USPTO, filing earlier can give the brewery an earlier date of first use for the name and/or logo while the brewery works to bring its products and services to market.

Isaac: Building on what Alesha said, we always suggest buying URLs and parking social media channels (including ones you may have no intention of using) so that you have a complete package to go along with your trademarked name.