Trademarks 101: Don’t Clown Around When Choosing a Name

By Ross Dannenberg

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With the explosive growth of the microbrewery industry, it’s increasingly difficult to choose a good name for your new beer (or even your brewery).  According to the Brewers Association for Small and Independent Craft Brewers, there were just 89 breweries in the United States in 1978 (the lowest point in history, ignoring prohibition), but that grew significantly to 6,372 in 2017, of which 6,266 were either craft breweries, microbreweries, or brewpubs.  As result, you’re not just competing with other breweries for customers, shelf-space, and those coveted festival awards, but for good names as well.

When choosing a name for your beer or brewery, it’s important to pick a name that is both marketable and protectable.  Regarding marketability, we’ll leave that to you and your marketing team.  After all, I’m just a lawyer.  Regarding protectability, however, that’s what I’m here for.  Protectability is measured both based on the inherent strength of that name you choose, as well as making sure no one else has already chosen that or a similar name. 

The inherent strength of a particular trademark is said to fall along a spectrum of distinctiveness, with generic marks having no distinctiveness and fanciful marks being the most distinctive.  Generic marks are words used to indicate the goods or services on which they are used (e.g., “Beer” for beer).  You can never trademark generic marks.  Next on the spectrum are descriptive marks, which are marks that describe in some way the goods or services on which they are used (e.g., “malt beverage” for beer).  Descriptive marks are not inherently distinctive under trademark law, and you must therefore accumulate “secondary meaning,” an acquired distinctiveness based on public association of the mark with the producer of the goods or services, before you can get exclusive rights in a descriptive mark.  Accumulating secondary meaning typically takes about 5 years and requires a showing that you have used the mark during that time without dispute from others, among other requirements.  Descriptive marks should be used as a last resort. 

Suggestive marks – those that suggest something about the product – are the first category of marks that have “inherent distinctiveness” and can be registered in the United States Patent & Trademark Office (USPTO) assuming there is no likelihood of confusion with any other existing marks.  Suggestive marks invoke some imagination by consumers because they do not directly describe a product or its features. "NSFW" for beer is an example of a suggestive mark that is inherently distinctive, and registered by Atlas Brew Works in the USPTO.

Arbitrary marks derive from familiar common words. The word, however, does not indicate or suggest what the product is, how it is made or what it does, and therefore arbitrary marks have more distinctiveness than suggestive marks. "Apple" for computers is an example of an arbitrary mark.

Fanciful marks possess the most inherent distinctiveness and therefore usually afford the most legal protection. Because fanciful marks are unique and have no other meaning, their definition cannot be found in an ordinary dictionary. "Exxon" for gasoline is an example of a fanciful mark.  In general, fanciful mark owners possess the greatest right to exclude others from using similar marks on a wide scope of related and less related products.

In addition to choosing a name that is inherently distinctive, it is also important to choose a name that is not likely to be confused with anyone else’s name.  Under US trademark law, a trademark owner has the right to exclude anyone else using a mark where there is a “likelihood of confusion” by intended consumers with the trademark owner’s mark.  Courts and the USPTO use a variety of factors when assessing likelihood of confusion, but one of the most prevalent is whether the trademarked goods and services and the alleged infringing goods and services are within the same “channels of trade.”  While reasonable minds may differ regarding what delineates one channel of trade from another, the USPTO often takes the position that all alcohol is within the same channel of trade such that someone owning a trademark for ACME for Beer could enforce its rights against someone using ACME for spirits, and vice versa. 

In view of the expansive position the USPTO takes, it’s important to consult with a trademark attorney and search existing marks before adopting one yourself.  That search should include registered trademarks as well as unregistered trademarks, because a senior user of an unregistered mark could still enforce its rights against you if you adopt a confusingly similar mark.  In addition to the USPTO, check online sources such as Untapped, Beer Advocate, and Google.  Check and see if anyone is using your desired mark for anything relating to alcohol and, if so, consider adopting a different mark.

 Label excerpt from  Undead Party Crasher

Label excerpt from Undead Party Crasher

Think this can’t happen to you?  Think again.  Clown Shoes Beer of Ipswich, Massachusetts, found itself in a bit of hot water when it launched its Vampire Slayer smoked imperial stout without first clearing the name.  After getting sued by the owners of the trademark VAMPIRE for beer, Clown Shoes ultimately changed the name of the beer to Undead Party Crasher (see http://rosso.me/undeadbeer for more history).  While this author agrees with Clown Shoes that a cease and desist letter would have been a more appropriate opening salvo rather than filing a lawsuit, this situation could have easily been avoided in the first place had Clown Shoes consulted a trademark attorney prior to adopting the name.  However, it doesn’t appear there is any love lost between Clown Shoes and trademark attorneys, so one must wonder if history is doomed to repeat itself.

Clown Shoes, on its web site, lists a litany of reasons why they don’t believe their Vampire Slayer beer infringes the registered VAMPIRE mark.  However, when choosing a new name your primary goal shouldn’t be to prove that you don’t infringe someone else’s mark after they say that you do.  Your primary goal should be to choose a name where you don’t have to even argue about in the first place.  Remember, even if you’re right and you don’t infringe, it still costs lots of money to defend your rights and prove your innocence after a trademark owner asserts rights against you.  I promise you that the cost at the outset to properly search and get clearance to use a strong, protectable mark is much less than the cost of being forced to change your name as a result of a legal dispute. 

Choosing a name for your beer is definitely one of those situations where an ounce of prevention is worth a pound (or three) of cure, so choose wisely!

Ross Dannenberg is an intellectual property attorney with the Washington, DC law firm Banner & Witcoff.  In addition to serving as outside intellectual property counsel for the DC Brewers’ Guild, Banner & Witcoff has also assisted local area breweries and distilleries with intellectual property clearance, protection, and enforcement.  Ross can be reached at rdannenberg@bannerwitcoff.com.