There are legal documents, promises and potential name changes. Is this a wedding? Nope, it’s a brewery being hit with a cease and desist letter for allegedly infringing on someone’s trademark. The craft beer industry is generally a friendly one but when it comes to this, breweries are protective of their name. Dogfish Head recently shared that they spent more on trademarks and trademark enforcement in 2013 than they did launching the company in 1995. That’s a lot of coin.

So how does a brewery avoid being threatened, sued and evade the cost of legal action and/or rebranding? Tim Lo, partner with Smart & Biggar, is a trademark agent and lawyer who has assisted a number of breweries secure their trademarks. Before choosing a new trademark, he recommends that you research to see if that name is being used in the alcoholic beverages industry. In addition to searching the publicly available databases of the Canadian Intellectual Property Office (CIPO) and the US Patent and Trademark Office (USPTO), searches should also be conducted using popular search engines. Other possible avenues for searching are government liquor board websites and popular beer apps/websites (Beer Advocate, RateBeer, Untappd).

After being satisfied that the trademark has not already been taken, meticulously document the first use of your beer/brewery name (i.e. from social media platforms, news release, blog post, article, beer event etc.). While trademark registration is still the best way to secure your rights, you may be able to successfully oppose a trademark application if you can prove you used the name publicly first.

Use it or lose it. If you have a trademark registration and you don’t use the mark in the public domain for over three years, you run the risk of losing rights to that trademark.

While retaining an experienced trademark lawyer may help you navigate the trademark process, one can obtain a trademark registration on their own. The CIPO and USPTO websites contain information on filing an application and the registration process. While you can’t always plan for a potential infringement, you can do your due diligence to try to protect your naming rights.

You build up brand loyalty with the name of your beer/brewery and changing it can mean a loss in sales thus, your best defence is to do your research before selecting a name and to make sure it’s unique to the industry.

Post by: Lynn McIlwee