So your craft brewery sells only beer. But your name is similar to a trademark registered by a winery for one of its labels halfway across the country. It may even be a little too similar to the name of a vodka brand already registered as a trademark somewhere else in the US.
Is this a problem for your brewery’s trademark registration for your beer brewing and retail service? Or a registration for your beer product itself?
Under current USPTO Examination procedure, it probably is.
Why is that? Do not consumers of alcoholic beverages in the US know the difference between beer and wine? Or vodka and beer?
They certainly do. But the question is, legally, one of the relatedness of such goods in relation to the mere possibility that some consumer, somewhere, will be confused as to who is selling which of these products.
This Article will discuss in some quick detail the issue of the relatedness of different alcoholic beverage products in trademark registration disputes.
First, however, a preliminary question.
What Is Trademark Likelihood of Confusion?
One of the basic requirements for registration of a craft beer or brewery name as a Federal trademark is that it must be unique enough to specifically identify you as the source of the product or service in US commerce.
In other words, the trademark cannot be too similar to another already registered trademark for a similar product or service.
The reason for this, other than your obvious business and marketing need to differentiate your craft brewery from all of the others in the marketplace, is that the underlying purpose of a US trademark law is to ensure that consumers are not confused as to who is selling what.
Unlike copyright registration, which purely protects your intellectual property interest in your created work, trademark law exists as a consumer protection mechanism.
Yes, trademark registration does ensure that your beer brand cannot be infringed or copycatted and does provide you with a host of legal remedies should this occur.
However, the first interest of the US Patent and Trademark Office (USPTO) reviewing trademark registration applications is the consumer.
Will registration of your craft brewery or beer brand be at all likely to confuse a consumer because it is too similar to one already registered?
If the USPTO Examiner reviewing your application believes that it does, within the framework of existing trademark law regarding confusion, your beer or brewery trademark registration application will be refused.
When Is Beer Confused with Wine or Vodka (or Anything Else!) in the Trademark Registration Process?
When a USPTO Examiner reviews an application for registration of a trademark for a craft beer or brewery, it is going to review it not only in light of similar names of prior registered marks. The Examiner will also review the relatedness of the products.
That is to say, it is okay to use the exact same name for your brewery or beer label if a prior registered trademark that is similar is registered in relation to a completely different sort of product.
For example, if your brewery is named the Great 123 Brewery and a prior trademark for “Great 123” has been registered for, say, a company making computer motherboard components, it will (probably) not be viewed as likely to confuse consumers.
Computer motherboard components are nothing like beer, and the people or companies that buy computer motherboard components do not shop for them in breweries. The same retail or wholesale outlets do not sell those two products under the same roof. (As far as this writer knows!)
However, if “Great 123” had already been registered for another brewery, well, that’s a slam dunk. Instant “likelihood of confusion” refusal.
But if “Great 123” were registered for—a winery? Or a wine label?
That’s a horse of a different color, as the little guy at the gates of the Emerald City told Dorothy.
The Relatedness of Beer and Wine and Vodka and—Smoothies?!?
Again, remembering that your “Great 123 Brewery” sells only beer, let’s assume that the “Great 123 Winery” likewise sells only wine. And possibly cheese boards. And maybe monocle polish. (But no beer!)
Is this still a problem? Are these goods “related” enough to cause a confusion issue in the mind of a USPTO Examiner?
Yes, they are. If you were to file a trademark registration application for Great 123 Brewery knowing that one had already been registered for Great 123 Winery, or even a new Great 123 Vodka Distillery somewhere in the depths of Ferndale, Michigan, you should expect to receive a Likelihood of Confusion Office Action refusal from your Examiner.
This isn’t to say that the refusal cannot potentially be overcome by a knowledgeable Michigan trademark lawyer—but you should expect the fight.
Why?
As a matter of routine process, your brewery’s USPTO Examiner is likely to file a refusal making this basic argument:
“Taverns and restaurants and bars sell beer. Taverns and restaurants and bars also sell wine. Taverns and restaurants and bars also sell vodka. Therefore, the goods are related, and consumer confusion is likely.”
Obviously, the Examiner will write with a little more flowery legal polish and include a multitude of case citations that are reasonably familiar to most regular Michigan trademark attorneys. But this is the crux of the argument, in distilled form (pun intended).
However, it is important to note that there is, per well-established trademark caselaw, no “per se” rule that goods and services are automatically “related” in this way.
The Examiner must show “something more” than that sometimes some places sell these different products.
What is the “something more” that must be shown?
This will differ on a case-by-case basis.
But, in one case regarding a wine label name and restaurants with a similar name, it was shown that the wine was actually served in that actual restaurant.
On the other hand, in a famous case involving Coors beer, the applicant introduced, in response to the Office Action refusal, evidence that few restaurants were in the business of selling the private label beer at issue in the case.
Math won the day in that case: the applicant’s trademark attorney showed that (at that time) there were only around 1,450 brewpubs and microbreweries in the United States relative to over 800,000 restaurants, or 18 one-hundredths of 1% of all restaurants. This was not a high enough percentage to convince the Trademark Board that confusion was “likely.”
Well, what about that smoothie?
Obviously, a smoothie is much less related to beer or wine or vodka than they are to each other. The smoothie is tossed in her as an example of a situation in which your odds of overcoming the likelihood of confusion refusal are even better.
How many breweries or wineries or distilleries also sell smoothies?
You can do the math on that one. You might not even need a calculator.
Beer vs. Wine vs. Vodka Trademark Registration Refusals: The Bottom Line
The bottom line, however, is that the trademark registration process is not mere “form-filing.” It is an adversarial process. Your first adversary is the USPTO Examiner, whose job performance ratings are, in part, premised upon the number of Office Action refusals filed in a given year.
If your beer or brewery name or logo or slogan is at all similar to one already registered by a winery or vodka distillery or any other remotely similar product (maybe even a smoothie!), you can expect to have to overcome a refusal.
Your best shot at success is doing things right from the start.
This means retaining a knowledgeable Michigan trademark lawyer to assist you.
A good trademark attorney will, first, run a thorough and professional clearance search of your beer or brewery name, slogan, or logo before an application is filed. If there is a potential (and potentially expensive) legal conflict resulting, you have, then, the opportunity to quickly re-brand.
Even if the clearance search shows you a smooth path ahead, you can never be sure that you will not suffer a refusal. You need a trademark lawyer on your side when the time comes to shove back.
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, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.