Craft beer trademark webinar

BRAND PROTECTIONBRAND PROTECTION THROUGH TRADEMARKS

Why Craft Beer Needs the ®THROUGH TRADEMARKS

Brian P. GreggMcNees Wallace & Nurick LLC 100 Pine Street, P.O. Box 1166100 Pine Street, P.O. Box 1166

Harrisburg, PA 17108-1166Telephone: 717.237.5456

Fax: 717 260 1769

© 2012 McNees Wallace & Nurick LLC

Fax: [email protected]

ABOUT MEBrian P. Gregg

I provide practical advice forI 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 LEARNLEARN

What trademarks are (and what not trademarks)trademarks). Why early clearance and registration of a trademarks is critical for craft brewerstrademarks is critical for craft brewers. Why the Craft Beer Industry is fertile ground for trademarks disputesground for trademarks disputes.How to avoid spending time and money on trademark disputestrademark disputes.


A HISTORY LESSONConnect Product to Source:

• Early symbols on clay pots• 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:Source:

• Name• Design• Color• Slogan• Other


WHAT ARE NOT TRADEMARKS

Domain Name• greendragonales.comCorporate Name

• Green Dragon Brewing Co.Descriptive termDescriptive term

• Ale, Stout, Lager, IPA


WHY REGISTER TRADEMARKS

Nationwide Rights• Critical for a brewer that

starts local, ensure you can expandS OPrincipal Register at USPTO

• Your mark shows up in searchesYou Can Use the ®

• Signal to others that you own your markSignal to others that you own your markMark is Presumed ValidT bl D d Att ’ F


Treble Damages and Attorney’s Fees

TRADEMARK CLEARANCE

Conduct a Trademark Search

Get the Opinion of Counselp

Ensure You Search Common LawEnsure You Search Common Law Sources Not Just the Trademark OfficeOffice


CLEARANCE/REGISTRATION COSTS COMPARED TO LAWSUITCOSTS COMPARED TO LAWSUIT

$300,000

$1,500-3,000Clearance/ Infringement


Clearance/Registration

InfringementLawsuit

CRAFT BEERALL THE RIGHT INGREDIENTS FOR TRADEMARK DISPUTESALL THE RIGHT INGREDIENTS FOR TRADEMARK DISPUTES


CRAFT BEERTRADEMARK DISPUTE – MAIN INGREDIENTSTRADEMARK DISPUTE – MAIN INGREDIENTS

Exponential GrowthExponential Growth

Local/Regional Distribution with Delayed or Slow Expansion

Other Industries view CraftOther Industries view Craft Beer's Success as a Threat


INGREDIENT 1 - CRAFT BEER INDUSTRY GROWTHINDUSTRY GROWTH

The number of U.S. breweries rose from under 100 to over 1700 in the last 30 years. – Brewers Associationy


INGREDIENT 2 - BREWERIES START LOCAL THEN EXPANDSTART LOCAL THEN EXPAND

Nationwide trademark rights areNationwide trademark rights are critical to long term viability of a brandbrand


INGREDIENT 3 - OTHER INDUSTRIESINDUSTRIES

And they are taking aim at craft beerAnd they are taking aim at craft beer.


ROLE PLAYING


ONCE UPON A TIME THERE WERE TWO LITTLE BREWERIESTWO LITTLE BREWERIES


THE GREEN DRAGON BREWING COMPANYCOMPANY


GREEN DRAGON SOUGHT SAGE ADVICEADVICE…


AND SO HE DID…


THE GREEN DRAGON BREWING COMPANY WAS SUCCESSFULCOMPANY WAS SUCCESSFUL

The brewery The brewery created a magicalgbeer that everyoneloved.I h b bIt was the best beerin the whole Realm.


in the whole Realm.

GREEN DRAGON ALE WAS SO POPULARPOPULAR

Word spread Word spread about this wonderful beer.K i h k d Knights asked for it by name.for it by name.


BUT ALL WAS NOT WELL IN THE REALMREALM…

The Green Dragon was The Green Dragon was not the only dragon gmaking beer i h R lin the Realm.


RED DRAGON BREWERY WAS FAR FAR AWAY FROM GREENFAR FAR AWAY FROM GREEN

DRAGON BREWING CO.Red Dragon made his beer way on the other side of the Realm.h f h RHe didn't think about using"RED DRAGON"RED DRAGONas part of his trademark, he didn't hcheck to see if that could be a problem.


p

RED DRAGON BREWERY ALSO MADE BEERMADE BEER

R d D Al 't Red Dragon Ale wasn't very good but Red Dragon Brewery made a lot of it.Soon the same taverns were serving both Green

AleAle

were serving both Green and Red Dragon Ales


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


THINGS ALSO GOT CONFUSING AT THE LOCAL TAVERNSAT THE LOCAL TAVERNS

aleale


GREEN DRAGON WAS CONCERNEDCONCERNED


SO GREEN DRAGON SENT RED DRAGON A LETTERDRAGON A LETTER…


RED DRAGON WAS NOT HAPPY BUT HAD TO CHANGEBUT HAD TO CHANGE.


AND SO GREEN DRAGON KEPT HIS BRAND STRONGHIS BRAND STRONG


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


RECENT NON-BREWERY DISPUTESDISPUTES


RECENT NON-BREWERY DISPUTESDISPUTES

THE BALD EAGLE BREWING COMPANY


TRADEMARK DISPUTESGordon Biersch v Oskar Blues (GORDON)Gordon Biersch v. Oskar Blues (GORDON)

• Forced Oskar to change to GORDON > G-KNIGHTFranciscan Vineyards v Black Raven BrewingFranciscan Vineyards v. Black Raven Brewing Company

• Franciscan blocked registration of BLACK RAVEN BREWING COMPANY based on RAVEN for wine.

Hansen Beverage v. Rock Art BreweryH (MONSTER D i k ) h ll d• Hansen (MONSTER energy Drinks) challenged Rock Art (VERMONSTER beer ) - case settled

Bell's Brewery v The Winery ExchangeBell s Brewery v. The Winery Exchange• 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. GreggMcNees Wallace & Nurick LLC 100 Pine Street, P.O. Box 1166

Harrisburg, PA 17108-1166

Telephone 717 237 5456Telephone: 717.237.5456Fax: 717.260.1769bgregg@mwn [email protected]

http://www.mwn.com/bgregg/


Craft beer trademark webinar

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Transcript of Craft beer trademark webinar