There are only so many hoppy, reserve, barrel-aged names to go around. This means that more and more otherwise happy, brotherly-loving brewers, vintners and distillers are taking aim at each other over company names and product names that may or may not be infringing on one another.
Before deciding your next beer MUST be named Brewers’Law Lager, or whatever, ask these 5 questions.
Question 1: Is Anyone Using a Similar Name?
The first place to go when you’re evaluating a name is Google (or your favorite alternative search engine). What comes up when you search your proposed name? What comes up when you search close alternatives for your name? Identify all of the in-use names that are similar to your proposed name. This isn’t exact science, but the standard is public confusion. Your proposed name might be too similar to an in-use name if you can imagine that a Regular Joe or Jill would confuse the two names.
Example: Brewers’Law Lager is confusingly similar to Brewer & Law White Wine.
If you don’t find any in-use names that are too similar to your proposed name, it’s probably trademark-safe and available for use. If you do find a similar name, go to Question 2.
Question 2: Is the Similar Name Used for a Similar Product or Service?
Finding an in-use name that might be confusingly similar to your proposed name doesn’t mean that you’re out of luck. Next you have to decide whether the in-use name is being used in connection with the same or a similar product or service. To put it in trademark-speak, is the in-use name used in the same or a similar class?
Beer, soft drinks and fruit juices are in Trademark Class 032, while wine and non-beer alcoholic beverages are in Trademark Class 033. However, even though they are different in different classes, the US Patent & Trademark Office (USPTO) has determined that beer and wine are similar products.
Example: Brewers’ Law Lager and Brewer & Law White Wine are used for similar products.
Even if you find an in-use name that is the same or very similar to your proposed name, you can still use it if the existing use is for a significantly different product or service. If the in-use name is for a similar product or service, go to Question 3.
Question 3: Is the Similar Name a Federally Registered Trademark in the Same or a Similar Class?
If the owner of the similar in-use name has registered the name as a federally registered trademark in the same or a similar class, things get more difficult. Having a registered trademark gives the owner a number of significant advantages, including:
- Federal registration is deemed to be notice to everyone in the US that the owner has an exclusive right to use the name
- The owner can sue infringers in federal courts
- Courts can award statutory damages, even if the owner has not shown actual monetary damages
- In cases of actual monetary damages, courts can award the owner treble damages (3x the damages) plus attorneys fees
- 5 years after registration, the registered trademark becomes incontestable, meaning that you cannot be challenged
Even if the similar in-use name has not been federally registered, you might have problems. The owner of a similar in-use name used in the same or a similar class has common law rights under federal and state law. This means that the owner can still use the state court systems to prevent you or anyone else from using a similar name in states where the in-use name has been used.
Example: If Brewer & Law White Wine is federally registered or is in use in Florida, the owner could prevent use of the confusingly similar Brewers’Law Lager.
If a similar in-use name has been federally registered in the same or a similar class, it’s probably time to pick another name. If the similar in-use name hasn’t been federally registered, but it has been in use in your home state or a state in which you want to operate, go to Question 4.
Question 4: Does the Owner of a Similar Name Aggressively Defend the Name?
Everyone who uses a particular name in commerce acquires common law rights to that name, unless someone acquires superior rights through federal registration or prior in-state use. But not everyone vigorously defends its rights to the name. This might be because of the legal cost, because the owner doesn’t care about other uses, or because the owner is just lazy.
When a name is in use in a similar class, but it has not been federally registered, it makes sense to research whether the owner has attempted to prevent other similar names from being used. This can be done by searching news articles and court records involving the owner of the name. After doing some research, you might decide that using your proposed name is worth the risk of infringing on an in-use name.
Example: If Brewer & Law White Wine is not federally registered, it is only in use in a different state, and the owner has not attempted to prevent other similar names from being used, it might be worth it to use Brewers’Law Lager.
If the similar in-use name has never been defended, it might be an easy decision to go forward with the use of your proposed name. However, it might be hard to evaluate whether the owner of the similar in-use name might try to block your name. In that case, go to Question 5.
Question 5: What’s It Worth to You?
Any time you’re evaluating a new name for your beer, wine or spirits, you have to ask how important the name is to you. Have you already invested in the name? If someone challenges your use of the name, whether or not justified, are you willing to pay the cost to protect yourself legally? Or is it just easier to pick a different name that doesn’t have these potential problems? The best time to answer these questions is before you get invested in a potential name, either monetarily or emotionally.
Example: If Loquacious Lager would work just as well as Brewers’Law Lager, and without any concerns, it might be a better choice.
Now What? Use It and Defend It
Once you decide to go forward with a name, get it into use. You want to make sure that you’re the first one to use the name, so that you’ll have the best opportunity to protect your use of the name.
When you use the name, include “TM.” This tells everyone who sees your use of the name that you are claiming your common law rights to the name.
Next, decide if you need to federally register the name yourself. In favor of registration are all of the advantages a registered owner gets to prevent other people from using the same or a similar name. On the other hand, a registered trademark can be costly and its not always a sure thing. You might not need to protect every name used for your products, but your company name and the names of your most important products are probably worth it.