Trademark clearance searching is vital for craft brewers and breweries. With the proliferation of craft brewers throughout Michigan and the rest of the United States has come a proliferation of brewery names, beer brand names, can and bottle labeling and packaging designs, and even new logos.
In such an active market, even interesting and unique business and product names may prove to be in prior use. However, you wouldn’t know that if you didn’t run a trademark clearance search before filing your registration application with the US Patent and Trademark Office (USPTO).
This Article will discuss the process of the sort of professional trademark clearance search that an experienced craft brew trademark attorney will run for you. It will also discuss the potential consequences of failing to conduct a professional trademark clearance for your craft beer or brewery name or logo before filing a registration application.
What Is a Craft Brewers’ Trademark Clearance Search?
A trademark clearance search for craft brewers or any other business enterprise is essential for brand development, brand protection, and brand value.
This statements presumes, however, an understanding of the importance of trademark registration for your craft brewery brand in the first place. It also presumes that an understanding of the legal bases for Federal trademark registration in the United States.
Disadvantages of an Unregistered Trademark
Without a registered trademark, your brewery cannot:
- Sue for trademark infringement in Federal court to block infringement and recover lost profits, including attorney’s fees;
- Request that US Customs block infringing imports;
- Use the ® registered trademark symbol in your marketing and packaging;
- Prevent the registration of new, infringing trademarks;
- Expand nationally;
- Secure licensing and franchising opportunities;
- Register its trademark internationally.
In short, if your brewery has not protected its trademarks with Federal registration, it is not a serious enterprise. Its long-term fair-market business value will be artificially stunted and limited.
Without a registered trademark that can be enforced in court, your brewery’s brand has no value. Plain and simple.
Trademark Registration Requirements
A craft brewery’s name or logo can be registered as a trademark when it fulfills certain legal criteria.
These trademark registration requirements include:
- A sufficient level of uniqueness to identify your brewery as the source of your products to consumers;
- Being the first to file a Federal trademark registration application for that name or logo;
- Being the first to use the name or logo in interstate commerce regardless of having filed a trademark application or
- Being “in use in interstate commerce,” or selling products or services across state lines (or attracting business across a state line).
The use in commerce requirement is a result of a Federalist governmental system in the US. That is, under the Commerce Clause of the US Constitution, the Federal government only has jurisdiction to confer the benefits of trademark registration upon your craft brewery’s name or logo if its business extends over a state line. (Otherwise, your brewery operation is under the jurisdiction of Michigan or another state’s laws only.)
Regarding Requirement #3, above, the United State is a “first to use” jurisdiction, not a “first to file” jurisdiction. This means that the right to exclusive use of a trademark belongs to the person or business who used it first in interstate commerce, even if a trademark registration did not result.
Thus, a professional craft brewery trademark clearance search seeks out not only prior trademark registrations that conflict with your name or logo but all prior uses of anything confusingly similar to that name or logo.
The Trademark Clearance Search Process
When you hire a craft brewery trademark attorney, generally, the first service that you will receive after your initial consultation will be the trademark clearance search.
This is no mere Google search. The difference between the sort of clearance search that you, a non-lawyer, would run and that run by an experienced trademark attorney will be clear as you read on.
Your trademark attorney will generally utilize a third-party trademark search service for at least the initial search.
This service will conduct an algorithmic search of the Principal and Supplemental Registers of the USPTO trademark database. This will include pending trademark applications and “dead” or abandoned trademarks.
Why is this the case when the UPSTO Examiner who eventually reviews your craft brewery’s application will only compare your proposed mark to live, registered marks?
This is necessary because of the “first to use” rule we mentioned above. Just because a trademark registration is Abandoned does not mean that the mark is not “in use” in reality. Businesses forget to renew their trademark registrations all the time. An Abandonment does not mean that the name or logo is free to use necessarily.
Steps of the Trademark Clearance Search
A professional craft brewer trademark clearance search will typically involve these steps:
- Search of the USPTO TESS register for live, dead, and abandoned marks;
- Review of the trademark registers of all 50 states, including Michigan’s;
- Analysis of the business entity formation records of all 50 states;
- Search of reserved web domains;
- Algorithmic search of internet instances of the term or design;
- Scouring of social media, including YouTube and GooglePlay and the Apple Store for app names;
- Drafting of a thorough and detailed legal Opinion Letter weighing the risks of proceeding based on the search results.
This Opinion Letter will enable you to decide to proceed on an education basis with your application. Alternatively, it will let you know that your proposed trademark is doomed to fail and that you’d better re-brand.
Importantly, it is an opportunity to rebrand before spending thousands and thousands of dollars on branding and , brewery, restaurant, product, packaging, and marketing development for a name or logo that you won’t be able to use without ending up in litigation.
In short, the craft brewers’ trademark clearance search is not just your everyday Google, Bing, DuckDuckGo, or other internet search.
Instead, it is aimed at uncovering all instances of use in commerce of any mark that will cause your trademark registration application any problem. It is even more importantly aimed at uncovering any ongoing, prior use that will be a problem for your craft brewing brand.
Do you want to receive a cease and desist letter from a brewery in another state you’ve never heard of?
Deciding to name your brewery or beer brand without retaining a trademark attorney to run a proper clearance search is a good way to receive one.
Consequences of Failing to Conduct a Trademark Clearance Search
A number of negative consequences may result from a failure to conduct a proper trademark clearance search.
Registration Failure
The most obvious consequence is that your trademark application will fail. The USPTO Examiner will find that another, prior registered mark conflicts with yours. Your craft brewery’s trademark application will be rejected on the basis that it is likely to confuse consumers of beer or related products and services.
That is, the prior registered mark that your trademark attorney would have found in a clearance search need not simply have been registered for a beer product or a brewery restaurant service. The USPTO increasingly will reject a mark as likely to confuse if the prior registration was filed for even a tangentially related service, such as restaurant that happens to serve alcohol, an energy drink product, or wine or a winery.
You need a Michigan trademark lawyer to tell you in advance when a prior registration poses a potential issue for your craft brewery.
Registration Opposition
Even if the USPTO Examiner allows your craft brewery trademark application to proceed, third-party registration owners can oppose approval of your application.
Once your application survives the initial examination phase conducted by the USPTO, other parties in interest may take a crack at your application.
During the so-called “publication period,” third parties have 30 days to file a so-called “Opposition” against your craft brewery.
The filing of an Opposition complaint initiates a form of Federal litigation. You will have a limited amount of time to respond. If you miss the response deadline, your trademark registration application will be Abandoned by the USPTO and closed.
If you do respond, litigation will unfold in the manner that all Federal civil litigation does, including discovery, motion practice, trial, and, if you’re lucky, some sort of mutually beneficial settlement.
Otherwise, you’ll proceed to trial, possible appeal, and possible further appeal. Likely with your attorneys charging you hourly every step along the way.
Infringement Claims and Damages
We mentioned this above, but it’s worth nothing again. If you don’t run a professional trademark clearance search for your craft brewery names and logos, you run the risk of being accused of infringement yourself.
As noted, this carries the risk of receipt of cease and desist demands and litigation in Michigan state, another state’s, and US Federal Court.
With attendant costs.
The bottom line is that it will always be significantly cheaper to rebrand before you’ve invested in marketing a new craft brewery name or logo.
Litigation is the most expensive option of all.
Contact a Michigan Trademark Attorney for Your Craft Brewery
Serious entrepreneurs and businesses do not go cheap on start-up costs. You should make no mistake: trademark registration and trademark clearance searching are essential start-up costs. If you’re ordering monogramed beer coasters and printing menus before you even know whether or not you can enforce your trademark in Federal Court, you are an amateur.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting craft brewers, vintners, distillers, and others in all industries with trademark registration, trademark renewal, and Office Action refusal response matters.