In the last 20 years the U.S. craft brewing industry has grown nearly fivefold. Every year hundreds of new craft breweries join the fray, giving Americans more libation choices than ever before. Go into any bottle shop or liquor store and you’ll find a variety of beers that extend far beyond the basic Budweiser, Coors, and Miller.
In such a growing industry, trademark issues loom large. Craft breweries must not only identify themselves with a unique name, but they must also identify their beers as such. Given the regional nature of the industry, duplicate names might go unnoticed for a while. But once discovered, they can create problems for both brewers.
The craft beer industry has faced a number of trademark issues in the last few years – not surprising, given the torrid growth. The cases differ in nature, but they all highlight the importance of applying for a trademark registration and then protecting that mark.
Who owns Nitro?
Late last year Left Hand Brewing Company filed a federal trademark application for the word “NITRO”. That might seem a bit general, since they have no beer simply called NITRO. They do have MILK STOUT NITRO, and also filed a trademark application for that name. The USPTO published the marks for opposition last month. That’s when the case started to pick up national attention.
A typical opposition period will last 30 days, but for Left Handed Brewing Company it will last quite a bit longer. Anheuser Busch caught wind of the trademark application, and petitioned the USPTO for an extension to file an opposition. They’re still unsure whether they will file an opposition, and even then it’s unsure if they could succeed. They do not currently brew any beers that use the name NITRO.
Once the story ran in the Denver Post, craft beer aficionados spoke out. Many, misunderstanding the nature of trademark law, railed against Left Handed Brewing for trying to own a word. That is not the case, and Left Handed Brewing responded on its website explaining the nature of the situation. “We believe another beer named simply, ‘Nitro’ or ‘Milk Stout Nitro’, would confuse the public and dilute the strength of the brand we have worked so hard to build,” they wrote.
To the point about MILK STOUT NITRO they are certainly correct. They brew a beer by that exact name, so no other brewery should have the right to capitalize on Left Handed Brewing’s work. But NITRO by itself is another story, since they do not brew a beer by that name alone.
Complicating the case is fellow Colorado brewer Oskar Blues, which has filed a federal trademark application for their beer, OLD CHUB NITRO. Left Handed Brewing claims that it “will not be pursuing any action against Oskar Blues,” despite Left Handed Brewing’s trademark filing. There might be good reason for that. While Left Handed filed for its trademark before Oskar Blues did, Oskar Blues claims a use in commerce three years prior to Left Handed Brewing.
That is to say, Oskar Blues could actually file an opposition to Left Handed Brewing’s trademark application if it were so inclined. The two breweries do appear to have a friendly relationship, but selectively protecting one’s trademark can weaken rights and cause problems in the future.
Beware the ‘hops’ puns
Hoppy beers with big, bitter flavors have become incredibly popular among craft beer fans. Brewers constantly experiment with new recipes, trying to get a leg up on the increasingly intense competition. Despite the ways brewers try to make their beers unique, almost all brewers share something in common: a fascination with puns involving the word “hop”.
The list is enormous, and quite frankly impressive: Hopzilla, Hopsecutioner, Hopageddon, Hopslam, Hoptimus Prime, Smooth Hoperator, Modus Hoperandi, Red Hoptober, Hoppy Ending, Hoppy Birthday, Hoptimum, Hopocalypse, Hoptopus, Hop Henge, Hop Stoopid, Hop Dam, Hopsickle, Notorious H.O.P., Pursuit of Hoppiness, Hoptologist, Hoptical Illusion, Hopulence, Hop Rod, Hop-a-lot-amus, Hop Wollop, Hopsauce, Count Hopula, Hop Notch, Audacity of Hops, Tricerahops, Velocihoptor, Hopasaurus Rex — the list could go on for pages.
The last name came into dispute a few years ago, when Steelhead Brewery sent a cease and desist letter to Freetail Brewing Company. Strangely enough, Freetail Brewing Company has never brewed a beer called Hopasaurus Rex. They merely employed a process with their hoppy beers, for which they used the term. But since they had a Hopasaurus Rex page on their website, Steelhead decided to send a cease & desist letter. (To which Freetail Brewing issued an amusing response.)
Freetail apparently acquiesced, despite their objections. There is no longer a Hopasaurus Rex page on their site, and their CEO Scott Metzer refers to it in the past tense.
For its part, Steelhead did file a trademark application for Hopasaurus Rex in 2010, claiming use in commerce as early as 2000. Sending a cease & desist letter might seem like a step too far, especially when a simple phone call can sometimes settle these matters. But Steelhead simply acted to protect its trademark rights in a fairly straightforward manner. With all the hop-named beers on the market, it’s understandable that they want to protect theirs closely. As should all brewers, especially as the field gets more crowded.
Research, or lose your trademark
If you receive a federal trademark registration for your beer name, you should be in the clear, right? Unfortunately for trademark holders, that is not at all the case. We can point to a fairly recent case, that of DuClaw Brewery vs. Ska Brewing Co., for a clear example.
In 2009 DuClaw filed a federal trademark application for a beer called EUPHORIA. The Trademark Electronic Search System (TESS) database lists dozens of entries containing the word, but none for a beer, so DuClaw appeared in the clear with this filing. The undoing of their trademark came when they tried to enforce their rights.
Once they received the federal trademark registration (on April 27, 2010), they sent a cease & desist letter to Ska Brewing, which also brewed an ale called EUPHORIA. Apparently DuClaw Brewery didn’t do its homework before sending the cease & desist letter, or otherwise misunderstood trademark rights, because Ska Brewing used the term EUPHORIA in commerce before DuClaw Brewery.
Ska Brewing’s lawyer, Jennifer Collins, wrote that her client “has acquired common law rights in the mark EUPHORIA having adopted and continuously used the mark in commerce in connection with beer and ale since at least November 14, 2005.” DuClaw first used Euphoria (actually EUFORIA) in 2006. The battle went to court, and Ska Brewing prevailed. The USPTO cancelled DuClaw Brewery’s trademark in late 2013. Ska’s own application, filed in early 2013, has been approved and is in the publication period.
The lesson here centers on research. Not every brewery will go through the troubles to trademark their beer lines. But they still have rights if they have continuously used the mark in commerce. It’s not clear what DuClaw Brewery thought it gained by trademarking EUPHORIA, despite Ska Brewing’s earlier use in commerce. But they did miss something in researching the trademark, given that Ska Brewing prevailed in court.
(DuClaw Brewing does still make and sell EUFORIA, on which it still does own federal trademark rights.)
Names might not be the strongest brands
In addition to trademarking their beer lines, craft breweries can also strengthen their brands by trademarking their names. This is standard operating procedure for businesses of all kinds. But that doesn’t mean that all brewery names are ideal for trademarks. Take the case of the Schlafly brewery for instance.
Tom Schlafly started brewing beer under his namesake brand in 1991. Since then his brewery has grown immensely, ranking as the 44th-largest craft brewery in the U.S. in 2013. He filed two logo trademarks, one in 1991 and the other in 2003. In 2011 he filed a federal trademark application for the word Schlafly, as it pertained to beer. The USPTO published it for opposition on July 31, 2012. That’s when he faced a bit of trouble.
The late Phyllis Schlafly, Tom’s aunt, made her name in politics in the 1970s. After learning of her nephew’s trademark application, she filed an opposition. In it she states:
In connection with its usage as a surname, it has the connotation of conservative values, which to millions of Americans (such as Baptists and Mormons) means abstinence from alcohol. An average consumer in Saint Louis and elsewhere would think ‘Schlafly’ is a surname associated with me, and thus the registration of this name as a trademark by Applicant should be denied.
The USPTO has guidelines about trademarking surnames, although in this case the rules are still unclear. Given Schlafly’s long run as a brewer and its general standing, it has certainly established a secondary meaning. Schlafly certainly isn’t a common surname. Does Phyllis Schlafly’s prominence warrant a halt on the trademark application?
In the end, both the U.S. Trademark Trial and Appeal Board and the U.S. Federal Circuit Court of Appeals agreed that the Schlafly name had acquired a “secondary meaning” and “distinctiveness” enough to warrant granting the mark. The case was finally decided via a 3-0 vote in the appeals court near the end of 2018, seven years after the original trademark filing.
While the case ultimately went in favor of the brewery, a seven year legal fight is likely not on the top of anyone’s to-do list. Be sure to have a qualified attorney complete a thorough trademark search before attempting to register your mark.