Anatomy of a Beer Label Part II: Trademarks
In addition to the regulatory requirements for beer labels, as discussed in the Anatomy of a Beer Label, Part I: Certificate of Label Approval (COLA) article, brewers should consider protecting trademarks on the label. their beer labels.
Since every brewer has a brand, consumers most often come across brewers’ trademarks in the form of a brand name or logo. Trademarks serve as source identifiers to distinguish the origin of goods and services and avoid consumer confusion. Typically, a mark can be a word, phrase, design, or a combination of such elements, although marks can also protect sounds, colors and smells under certain conditions. For a beer label, trademark law is best suited to protect the brewery name, sub-brand or inventive beer name, as well as any slogan or logo.
Brewers, like all business owners, obtain trademark rights to a term simply by using that term. However, unregistered common law marks only grant rights in the geographic area where the owner sells or ships their products under that mark. Trademark owners, such as brewers, may consider registering their trademarks with the United States Patent and Trademark Office (USPTO) for additional benefits. For example, federal registrations offer presumptive rights nationwide. Brewers who are looking for trademarks to clear their own proposed marks can more easily discover registrations with the USPTO and then avoid using a potentially infringing proposed mark.
Additionally, if another company has filed for a trademark registration that the USPTO considered could be confusing with a brewer’s existing trademark registration, the USPTO may refuse to register the trademark. subsequently filed, which benefits the owner of the registered trademark. Owners of registered trademarks also benefit from the ability to apply for registration of their marks with U.S. Customs and Border Patrol, which will help prevent the importation of counterfeit or other counterfeit products.
Before applying for the registration or use of a trademark, it is prudent to hire a lawyer to carry out a trademark search. The lawyer will assess the risk that existing trademarks may present to the registration or use of the proposed mark. One of the common reasons the USPTO rejects a trademark registration is that there is a “likelihood of confusion” with an already registered trademark. The USPTO, as well as the courts, assess the likelihood of confusion not only with identical products, such as two types of beer, but also with related products.
Since trademarks cast this “shadow” on related products, lawyers can assess trademarks used not only on beer, but also on wine, spirits or other products or services, in order to to determine whether the mark conflicts with potentially related products or services. While there is no rule that all alcoholic beverage products are related, the USPTO regularly finds them related, and considerations like this factor are taken into account in the analysis of trademark research. However, the similarity of the goods is only one factor in the likelihood of confusion analysis relevant to the choice of a mark.
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When filing a trademark application with the USPTO, an applicant must indicate a filing basis. A “use in commerce” filing basis requires that the trademark owner is already using the mark in interstate commerce. An “intention to use” filing basis indicates that the applicant has a good faith intention to use the mark in interstate commerce. Acquiring a COLA before applying for a trademark registration can help support an intent-to-use filing if it is contested later, so breweries may consider applying for a COLA before filing. apply for the registration of a trademark.
As an alternative to federal trademark registration, brewers may consider filing state-level trademark applications. To register a trademark at the state level, the application must meet the specific requirements of the state concerned.
Check back next week for the final segment of our three-part series, which will cover trade dress and copyright protection for beer labels.
Daan Erikson is a lawyer in Husch Blackwell’s Chicago office and a member of the firm Food & Food industrial group and Intellectual property practice team. Emilie Lyon is a lawyer in Husch Blackwell’s Washington, DC office and is a member of the firm Food & Food industrial group and Alcohol and drinks practice team. Written with assistance from Colleen Seidel, Summer Associate in Husch Blackwell’s Washington, DC office.