“I love paperwork.” – said no one ever.
This is the obligatory trademark blog post. I say that because it seems to be one of the most common and most commented on topics in craft beer (at least in legal circles) other than the effect of the Gov Shutdown on the TTB. In fact, the cover story in Sept/Oct 2013 issue of The New Brewer is on trademark issues and brand protection.
I feel like this topic has been beaten to death and that I can’t add a lot to the discussion. Don’t get me wrong, I’ve got a lot to say and we talk – at length – about the issues and the right way to resolve them, etc. But a lot of it has already been said by others and I don’t know that another voice adds much to the choir. I’d rather spend my time working on a solution or helping individuals conquer their own battles on the trademark front.
That said, I feel it incumbent on me, as a beer lawyer and in practicing trademark law, to at least highlight the issues involved. I’ll try and keep it succinct and at a level that makes sense to those in the trenches as well as the legal wonks. Here we go:
What’s a “TM?” How’s that different than a (R)?
What is a trademark?
Not very often does a legal definition make sense to a non-lawyer, but I think this one works:
Trademark, n – A word, phrase, logo, or other graphic symbol used by a manufacturer or seller to distinguish its product[s] from those of others. The main purpose of a trademark is to designate the source of goods or services. In effect, the trademark is the commercial substitute for one’s signature. Black’s Law Dictionary. Third Edition. Garner, Bryan A. – Editor. West Publishing, 2006.
I like the description “the commercial substitute for one’s signature.” That really puts things in perspective – and gives us some insight as to why trademarks can be such personal /emotional issue. It can be your identity.
But what’s not in that definition? Registration, exclusivity, ownership rights, infringement, etc. When we think of trademark issues we read in a lot of stuff that’s not there, at least not necessarily there.
I’m not going to go into the nuances of trademark use, registration, “common law” trademarks, channels of distribution, likelihood of confusion, etc – though I’m happy to do so (maybe in another post…). The key thing to remember is that a lot of the terms you hear are terms of art, that is they don’t have their regular everyday meaning. Think of it this way, the physical boundary between two pieces of property can be a lot different than the legal boundary between those pieces.
(“Yep, I reckon’ the property goes down thar a fur piece and runs between da big oak tree that Billy done ran into with da tractor and da field where Bubba’s barn used to be – you know where that two-headed mule was borned” versus “the property boundary is a line extending from an iron stake located near the NW corner of Thurmond St and Johnston Ave heading 76º32’21” NNE for 245.8 feet and terminating in the middle of the creek bed” – well, you get the idea.).
So, when you hear words like “likelihood of confusion,” throw out your common sense and remember that these are legal conclusions, not descriptions.
WHAT are you talking about?
Anyway. What was I saying? Oh yes, solutions.
See, here’s the thing that folks are doing: they’re investing a lot of themselves and their money behind an idea that they think is great and that they want to build their company around. And that’s good.
Here’s what they’re not doing: checking to see if someone else already had a similar idea.
Fifty or sixty years ago, sure. Maybe on the other side of the country, there was someone using a name that you had been using, you never got in each others’ way and you never learned about each other. Everything was hunky-dory.
But now, thanks to the interwebs and social media, – well… there’s simply no excuse for folks not to do their “due diligence” in researching a name, image, or idea before starting to use something.
Let’s face it, there are only so many “witty” hop puns available in the English language. You may think you’ve come up with something new, guess what… you probably haven’t. The question is not “is it new?” The question is “can I use it?”
So… can I use it?
Like any good lawyer, my answer is “maybe.”
The maybe depends on several factors: your idea, your risk threshold (how much are you willing to risk?), your pockets (how much are you willing to spend?), and your investment (what’s it worth to you?) – notice how these tend to revolve around money? Everyone is concerned about protecting their own brand because that’s their identity and how they intend to market themselves (i.e. how they make money).
Most breweries/brewers are good people and want to do right by others and do what makes sense. The problems come up with the lawyers get involved (‘cause they bill by the hour).
Here’s a simple recipe for finding out if you can use your new name/logo/idea that you just came up with:
Note: you know the old adage that “‘close’ only counts in horseshoes and hand grenades?” Well, add one to that: most of the time, “close” also counts in trademark. If you search for something and you find something that’s “close,” it’s probably close enough.
Step:
- Go to BeerAdvocate.com, RateBeer.com, Untappd, Pintley, or your favorite beer ratings platform and search for your idea. If it’s a name – search for the name. If it’s a logo, describe the logo or main image.
- Find it? You’re probably done. Go to Step 5
- Didn’t find it? Try again. Vary the search terms and words, try synonyms
- REALLY didn’t find it? Go to step 2
- Go to Google.com and type in your idea and the word [beer], [alcohol], [ale], [lager], [draft], [draught], [mead], [cider], [or any of a dozen or so other words that could describe your idea as it relates to a beverage].
- Find it? You’re probably done. Go to Step 5
- Didn’t find it? Try again. Vary the search terms and words, try synonyms
- REALLY didn’t find it? Go to step 3
- Congratulations you’ve already completed more research than many breweries I know. Continue to step 4
- Go to Google Images search (http://www.google.com/imghp) repeat the search from Step #2.
- Find it? You’re probably done. Go to Step 5
- Didn’t find it? Try again. Vary the search terms and words, try synonyms
- REALLY didn’t find it? Go to step 7
- Found it? Bummer. But maybe that’s ok. Find out where and how it’s being used. Contact them and ask if you can use it. It’s often best if you call.
- Did they say yes? Great. Agree on how, where, and when you can use the mark and get it in writing. Go to Step 6
- No, huh? Well, as a last ditch attempt, go to step 8
- Talk to a lawyer that does trademark work.
- Make sure that your agreement protects you and your investment in the mark. Cover yourself against the other party’s bad business decisions and calamities.
- Talk to a lawyer that does trademark work.
- If you really have come up with something new or that no one else is using, you might want to protect your rights in it. Things to think about include:
- Formal Trademark search and clearance
- Federal registration (you know, the “®” symbol)
- State registration
- What does the little “TM” mean?
- Licensing
- Use “in commerce”
- Talk to a lawyer that does trademark work.
- If you really think you should be able to use the mark and someone else has something close, talk to a trademark lawyer, there may be sufficient gray area that you could use it with impunity, or with little risk. But don’t make this call on your own. It may be the difference between an honest mistake/disagreement and knowingly infringing on someone else’s mark.
Conclusion
The more of this you can do yourself, the better. The less the lawyers are involved, the better – at least, up to a point. Einstein said “Everything should be made as simple as possible, but not simpler.” (I’m paraphrasing, I think). The point is that if it’s too simple, you’ll leave out something important. That’s how it is with trademark. You can do a lot yourself, but when push comes to shove, you probably need to have a lawyer give you a read/evaluation on the issue. A little bit of money on a lawyer could save a lot of time, angst, and money later.