Successful Craft Beer Trademark Registration: An Introduction
What makes a good craft beer trademark?
Whether a brewery name, beer brand name, logo, or bottle or can design or trade dress, the qualities that make a proposed trademark registrable with the US Patent and Trademark Office (USPTO) are the same.
A good trademark is:
- One that uniquely identifies the source of the goods or services the mark represents to consumers;
- One that does not merely describe the product or service itself, or its geographic origin;
- Not comprised solely or largely of graphic elements cannot be registered as trademarks, such as national flags;
- One that does not utilize the name of a person without that person’s consent;
- Not likely to confuse consumers as to the source of the product or service;
- One that simply doesn’t infringe upon anyone’s registered trademark.
Craft breweries and the beer products that they produce provide an amazing array of names, logos, and label designs.
Interesting names, flashy colors … A great trademark registration is, first and foremost, a great brand.
Something that jumps out at a buyer the moment that they walk into the beer cooler.
Let’s look at a few registered craft beer trademarks and examine the reasons that they were successful—or semi-successful in their brand protection efforts.
7 Noteworthy Craft Beer Trademark Registrations:
This registered trademark is a good example of the need for consent of an individual whose name or likeness is utilized in the proposed mark.
This mark is in fact owned by The George Lopez Brewing Company, a venture created with the cooperation of George Lopez himself, the well-known comedian.
Nevertheless, despite the tangential ownership of the mark by the individual (celebrity) whose name is utilized in the mark, the application required Lopez’s affirmative consent.
Lacking that consent, this application would have been rejected.
Lesson: If you are not George Lopez, don’t file an application for trademark registration using his name. Or any other celebrity’s. Or non-celebrity’s.
This Scottish beer brand filed its trademark application in the US to protect its brand for use in commerce here.
However, the word and name “Schiehallion” is also the name of a mountain in Scotland—not far from the location of the owner brewery itself.
As the name of a geographic location cannot be registered as a trademark for a product or service, the USPTO refused the application.
The trademark lawyer retained by the owner to file the registration application argued that the name of this mountain was not well known in the US and, therefore, should not bar registration.
These arguments were unsuccessful, however, and the mark was allowed registration, ultimately, only to the Supplemental Register, which affords a weaker level of protection. (Read more about the Supplemental Register here.)
Lesson: Don’t use a geographic name or feature alone as your craft beer brewery or product name.
This brewery’s name was created using a familiar trope: the use of a foreign word or phrase to convey a brand impression—regardless of what the foreign word or phrase actually means when translated to English.
The word “ovinnik” is the Slavic or Russian name for a cat-like spirit that haunts barns or, as explained in the eventual amendment of this trademark application, threshing houses.
The application did not initially provide an English translation of this foreign term.
The so-called Doctrine of Foreign Equivalents holds that a trademark may be likely to confuse consumers even if it is in a foreign language if the English translation of the word is overly similar to an existing registered trademark.
Or, likewise, if, in English, the term turns out to be merely descriptive of the product.
Thus, if the English language translation of “Ovinnik” had been “brewery,” the applicant here would have had a problem.
As the cat-like spirit haunting barns or threshing houses is not figurative of brewing, breweries, or beer or any other registered trademark, the applicant here merely was required to amend the trademark registration application to include the English translation.
Lesson: Be careful with those cool-sounding foreign words! Unless the term is from a truly dead language such as ancient Babylonian, you’ll need to ensure that your name has no meaning in any language.
This craft beer brand received approval of its USPTO trademark registration application pretty easily.
The strongest company or product name that you can attempt to register as a trademark is one that is fanciful. That is, a word that has no meaning in the English language outside of its use as a trademark.
This is not exactly the case with “Dagon.”
“Dagon” is the title of a short story written in the early 20th century by the pioneering horror/sci-fi writer H.P. Lovecraft. The original story concerned a certain amphibious Elder God. Lovecraft’s writing has inspired literature, films, board games, and role playing games.
Dagon is also the name of an ancient Phoenician god.
Neither definition has anything to do with craft beer or brewing, however. This is why the trademark registration application succeeded easily.
While “Dagon” may not be a fanciful term, it is an arbitrary term.
An arbitrary term is the next strongest sort of word that you can utilize as a trademark. It is a word that does have independent meaning in the English language—but not in any manner related to its use as a trademark for your brewery or craft beer brand.
Lesson: Shoot for a fanciful or arbitrary term when developing your brewery or craft beer brand.
What is noteworthy about this craft beer trademark registration?
Nothing in particular, except that it is a great example of the trademark registrability of a slogan tag-line, or advertising phrase.
This slogan is owned by Migration Brewing, LLC, of Portland, Oregon. Wisely filed with the help of a trademark attorney, this is another trademark application that sailed through the USPTO approval process without a great deal of Federal pushback.
What a craft brewer needs to demonstrate an application to register a phrase of this sort as a trademark is that it is currently being used in interstate commerce to advertise the craft beer product with which it is associated.
Thus, a “specimen” providing evidence of the slogan’s use in advertising or packaging must be submitted with the application or, if an “intent to use” application, once the application is approved and allowed.
Additionally, it must be demonstrated that no other trademark owner has been using the phrase in interstate commerce longer.
“Interstate commerce” simply means that the product or service is being sold across state lines.
In the United States, we are a “first to use” jurisdiction with regard to trademark registration rather than “first to file.”
This means that the person or entity who was the first in time to use a proposed trademark in interstate commerce has the right to register that term or design as a trademark—not the person or entity who just happens to file a Federal trademark application first.
Lesson: If you use a phrase consistently and in the same manner to advertise your brewery or beer brand, it can be registered as a Federal trademark.
This craft beer brand trademark registration is an eye-catching one, for sure.
The somewhat jaw-dropping nature of the name of this beer (which, as of this writing, does not yet appear to be in use in commerce, though the trademark registration is approved) is indeed what is noteworthy enough about it to include it in this list.
There are many examples of shocking or allegedly vulgar terms peppering the Federal trademark register.
The point here is that such trademark registration applications are commonly allowed and approved.
To the extent that the USPTO may formerly have refused registration of Federal trademark applications on the basis that a term or image used is offensive in some way, the US Supreme Court struck down such subjective evaluation criteria recently in a well-publicized case concerning the registration as a trademark the name of the all-Asian punk rock band, The Slants.
“AF” when attached to “punk” or even just the letter “P” typically stands for “… As Fuck.”
Punk As Fuck.
What’s not to like?
If one were to draw something resembling a lesson from this particular trademark registration, it would be that the re-implementation of a pre-existing phrase for use as a company name or product brand is rife with probably unnecessary danger.
This application worked out will for the brewery that filed it, but this trademark attorney has received calls and inquiries from many potential applicants who have done the same thing only to find that they have a lot of competition in the marketplace for use of the phrase.
A pre-filing clearance search of your proposed trademark is especially important when utilizing a term or phrase that his prior use in the popular vernacular.
A good trademark attorney, prior to filing your application, will perform for you a professional-caliber search not only of the Federal TESS database but also of all 50 states’ own trademark databases, business registrations, domain name registrations, social media, and more.
This search will ensure that, when you seek to register a phrase that you did not yourself concoct, such as “Punk As Fuck,” that someone else hasn’t beaten you to the punch.
Lesson: Hire a trademark attorney to review your mark and properly perform a clearance search before filing any application.
7 Lessons in Trademark Registration: Postlude
The bottom line here is that Federal trademark registration is far more than mere form-filling. It is not something that can be done competently by a discount online form-submission service.
It is a legal process that can quickly become adversarial and costly when conducted improperly and without legal guidance.
Non-lawyers cannot provide legal advice. They cannot draft pleadings for you for filing with the USPTO. They cannot appear before the USPTO or Trademark Trial and Appeals Board (TTAB) for you.
Only a licensed, US attorney can do those things. Only an experienced trademark attorney will help you to ensure that you do not fall into any of the branding or application traps discussed above.
At The Hilla Law Firm, PLLC, we pride ourselves on friendly communication, efficient service, and affordable rates.
Contact Us Here to schedule an initial consultation appointment at no charge to discuss your trademark needs.