Craft beer trademark webinar

BRAND PROTECTION
THROUGH TRADEMARKS
Why Craft Beer Needs the ®
Brian P. Gregg
McNees Wallace & Nurick LLC
100 Pine Street, P.O. Box 1166
Harrisburg, PA 17108-1166
Telephone: 717.237.5456
Fax: 717.260.1769
717 260 1769
bgregg@mwn.com
© 2012 McNees Wallace & Nurick LLC

ABOUT ME
Brian P. Gregg
I provide practical advice for
businesses to help protect their
intellectual property.

I'm passionate about working
with the craft brewing industry.

Brewers Association member.

Home brewer.


WHAT YOU ARE ABOUT TO
LEARN
What trademarks are (and what not
trademarks).
trademarks)
Why early clearance and registration of a
trademarks is critical for craft brewers
brewers.
Why the Craft Beer Industry is fertile
ground for trademarks disputes
disputes.
How to avoid spending time and money on
trademark disputes
disputes.


A HISTORY LESSON
Connect Product to Source:
• Early symbols on clay pots
• Indicates where the pot came from - the
“manufacturer”
manufacturer
• Better pots worth more money – “good will”


HOW TO SPOT A TRADEMARK
Connect Product to
Source:
• Name
• Design
• Color
• Slogan
• Other


WHAT ARE NOT TRADEMARKS
Domain Name
• greendragonales.com
Corporate Name
• Green Dragon Brewing Co.
Descriptive term
• Ale, Stout, Lager, IPA


WHY REGISTER TRADEMARKS
Nationwide Rights
• Critical for a brewer that
starts local, ensure you can expand
Principal Register at USPTO
S O
• Your mark shows up in searches
You Can Use the ®
• Signal to others that you own your mark
Mark is Presumed Valid
Treble D
T bl Damages and Attorney’s Fees
d Att ’ F

TRADEMARK CLEARANCE
Conduct a Trademark Search

Get the Opinion of Counsel
p

Ensure You Search Common Law
Sources Not Just the Trademark
Office


CLEARANCE/REGISTRATION
COSTS COMPARED TO LAWSUIT

$300,000

$1,500-3,000
Clearance/ Infringement
Registration Lawsuit

CRAFT BEER
ALL THE RIGHT INGREDIENTS FOR TRADEMARK DISPUTES


CRAFT BEER
TRADEMARK DISPUTE – MAIN INGREDIENTS

Exponential Growth

Local/Regional Distribution with
Delayed or Slow Expansion

Other Industries view Craft
Beer's Success as a Threat


INGREDIENT 1 - CRAFT BEER
INDUSTRY GROWTH
The number of U.S. breweries rose
from under 100 to over 1700 in the
last 30 years. – Brewers Association
y


INGREDIENT 2 - BREWERIES
START LOCAL THEN EXPAND
Nationwide trademark rights are
critical to long term viability of a
brand


INGREDIENT 3 - OTHER
INDUSTRIES
And they are taking aim at craft beer
beer.


ROLE PLAYING


ONCE UPON A TIME THERE WERE
TWO LITTLE BREWERIES


THE GREEN DRAGON BREWING
COMPANY


GREEN DRAGON SOUGHT SAGE
ADVICE
ADVICE…


AND SO HE DID…


THE GREEN DRAGON BREWING
COMPANY WAS SUCCESSFUL
The brewery
created a magical
g
beer that everyone
loved.
It was the best beer
I h b b
in the whole Realm.

GREEN DRAGON ALE WAS SO
POPULAR
Word spread
about this
wonderful beer.
Knights k d
K i h asked
for it by name.


BUT ALL WAS NOT WELL IN THE
REALM…
REALM
The Green Dragon was
not the only dragon
g
making beer
in h R l
i the Realm.


RED DRAGON BREWERY WAS
FAR FAR AWAY FROM GREEN
DRAGON BREWING CO.
Red Dragon made his beer way on the
other side of the Realm.
h f h R
He didn't think about using
"RED DRAGON"
RED DRAGON
as part of his
trademark, he didn't
h
check to see if that
could be a problem.
p


RED DRAGON BREWERY ALSO
MADE BEER
Red D
R d Dragon Ale wasn't
Al 't
very good but Red
Dragon Brewery made a
lot of it.
Soon the same taverns Ale

were serving both Green
and Red Dragon Ales


NOT ALL BEERS ARE EQUAL
Knights liked GREEN DRAGON ALE
but thought RED DRAGON ALE
tasted evil.


THINGS ALSO GOT CONFUSING
AT THE LOCAL TAVERNS

ale


GREEN DRAGON WAS
CONCERNED


SO GREEN DRAGON SENT RED
DRAGON A LETTER…
LETTER


RED DRAGON WAS NOT HAPPY
BUT HAD TO CHANGE
CHANGE.


AND SO GREEN DRAGON KEPT
HIS BRAND STRONG


THE MORAL OF THE STORY IS…
Choose distinctive marks you can
defend.
Screen and clear trademarks to avoid
unnecessary conflicts.
Register trademarks early.
You
Y are th "trademark police."
the "t d k li "
Be proactive - others are more likely
to change if contacted before making
a significant investment in a brand.


RECENT NON-BREWERY
DISPUTES


RECENT NON-BREWERY
DISPUTES

THE BALD EAGLE
BREWING COMPANY


TRADEMARK DISPUTES
Gordon Biersch v Oskar Blues (GORDON)
v.
• Forced Oskar to change to GORDON > G-KNIGHT
Franciscan Vineyards v Black Raven Brewing
v.
Company
• Franciscan blocked registration of BLACK RAVEN
BREWING COMPANY based on RAVEN for wine.
Hansen Beverage v. Rock Art Brewery
• Hansen (MONSTER energy Drinks) challenged
H D i k ) h ll d
Rock Art (VERMONSTER beer ) - case settled
Bell s
Bell's Brewery v The Winery Exchange
v.
• Bells opposed Winery Exchange's applications to
register COPPER BELL (with beer) and filed
federal law suit (use vs. registration)

TRADEMARK DISPUTES


DISCUSSION & QUESTIONS

Brian P. Gregg
McNees Wallace & Nurick LLC
100 Pine Street, P.O. Box 1166
Harrisburg, PA 17108-1166

Telephone: 717 237 5456
Telephone 717.237.5456
Fax: 717.260.1769
bgregg@mwn.com
bgregg@mwn com
http://www.mwn.com/bgregg/


Craft beer trademark webinar

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Craft beer trademark webinar