By T.J. Romano
For the Oregon Beer Growler
A trademark is a word, symbol or slogan used to identify and distinguish one’s goods and/or services. In essence, trademarks are your brands (e.g., Widmer or Mirror Pond). In the Oregon Beer Growler’s October 2012 issue, my Trademark 101 article discussed the importance and basics of clearing and protecting trademarks.
Here, this Trademark 102 article focuses on the recurring conflicts arising between beer, alcohol and wine brands. The test for trademark infringement under U.S. law requires a multifactor legal analysis, with the primary focus being whether confusingly similar marks are used with confusingly similar goods and/or services.
And therein lies the issue. The current law has developed to provide support that beer, wine and other alcohols are related to one another. The upshot is that a beer brand can challenge a wine or hard alcohol brand and vice versa. While it may seem logical that a wine could not be called Coors or a beer could not be called Dom Perignon without the necessary permission, the reality is that even non-famous marks can serve as the basis for a challenge. The challenge may come during the federal trademark registration process with the U.S. Patent and Trademark Office (PTO), an opposition or cancellation proceeding against a federal application or registration, or in a civil lawsuit. PTO examiners and brand owners can support such a challenge citing to current court case law. Yes, I hear you: nobody would confuse beer and wine brands. But “it is what it is,” so to speak. Setting aside personal commentary, below I set forth a few practical considerations under the current landscape:
— Clear your brands to avoid potential conflicts: Search diligently before adopting a mark. Any search must consider brands beyond beer, including wine and hard alcohol brands. While I encourage your own initial searching, there is no substitute for obtaining a formal legal clearance opinion about use and registration from a trademark attorney.
— You notice a wine or alcohol with your mark -- don’t panic: The good news is that there are many resolution options available. Perhaps the marks can be distinguished in some other way or a deal can be reached with the other brand owner. Perhaps you used your brand first or at least first in important geographic regions.
— Do NOT ignore the situation: The current reality is that U.S. legal cases exist to support that a beer mark is confusingly similar to wine or hard alcohol marks. Ignoring a demand letter from a winery may lead to an unwanted, and perhaps unwinnable, lawsuit. But again do not panic as there are many options to explore, such as coexistence or concurrent geographic use before resorting to the dreaded rebrand.
— Do NOT ignore another using your marks: Your marks are important, so protect them. Indeed, U.S. law requires brand owners to monitor against unauthorized use of marks. Again, multiple options exist to protect your brand, from licensing to more aggressive tactics. But if you do nothing against a wine or hard alcohol brand, you risk weakening or even losing your mark.
You may believe this brand dilemma is a nuisance, but be aware that the issue is real. The good news is that options exist if a conflict arises. But all have legal pros and cons and each situation is unique, so consult with a trademark attorney regarding your circumstances.
T.J. Romano is a partner at the intellectual property law firm of Kolisch Hartwell, P.C. of Portland. He loves brands and beer, sometimes together. Contact: firstname.lastname@example.org and 503-224-6655.