Got That Mark? Trademarking Your Brewery & Your Brands

​Although it can be a sometimes lengthy and costly endeavor for a startup or newer brewery, taking the time to protect your intellectual property can be time and money well spent.​

​From the name of your brewery, the design of the logo, and even individual brand names of beers, making sure there is no confusion or theft of your identity matters.​

“Trademarks are important​,” said​ ​Summit ​founder ​and President​,​ Mark Stutrud​. ​“​There have been many times over the past 35 years that someone has used, or tried to use our trademark. If you don’t respond to people who are using a mark that you own it weakens your registration and any position that you may have with any legal issues that may arise due to this.

​“​This applies to peripheral trademarks, too. It’s very important when you think about this whole issue to engage and retain an attorney who is in this specialty. It’s not necessarily the kind of territory that a generalist can deal with because as the number of breweries that have grown so has the complexity of all these trade names, marks, quotes, and attitudes.”

​Starting his professional career as an intellectual property attorney before becoming a brewer and a co-founder of Earnest Brew Works in Toledo, Ohio, Keefe Snyder, said they were meticulous in making sure that the ​brewery’s name would pass trademark standards.

“When we did that search, I actually came across a mark for Ernest​ ​Gallo winery,” he recalled as the brewery opened in 2016. “We were worried it would get caught up, but our mark is actually ‘earnest brew works.’ So we went ahead and filed the application, the Ernest Gallo mark did not come up in the search as something that raised a problem most likely because we limited our scope with three words.

“If we just wanted ‘earnest’ it definitely would have come up, even if it’s a different spelling because phonetics matter.”

Snyder, along with Ecliptic Brewing’s John Harris, shared with Brewer tips on working through both trademarking a name and for beer brands, which Harris finds important as well.

“We trademark our beer names. We trademark as many things as we can,” said Harris, who opened Ecliptic in Portland, Oregon in 2013, and noted that brands such as Starburst IPA and Phaser Hazy IPA are owned by the company despite needing to shell out some money each time.

“We really invested in a name, especially a brewery name. You really want to trademark it,” he said. “You have to protect your intellectual property.

“There’s still some breweries out there — they’re quite large, and they haven’t haven’t trademarked anything — and I’m like, ‘Wow!’ Of course they have prior use so they could probably argue that it should be theirs. I personally take trademarking very seriously.”

The first thing ​Harris does, whenever looking at a new ​beer ​name is ​he​ get​‘s​ on the ​Trademark TESS database, which allows you to search what marks are already registered.

​“It can be a very long day​,” he said, sometimes up to 250 marks can come up in a search​. ​“​I’ll look through every mark and see if there’s anything living that might affect us using that name. If we encounter a winery that uses it, I say we can’t risk a core seasonal down the road. If it really hits and we want to go back for three or four years​, we want to have a mark on it, we don’t ​want to ​have a ​‘​cease and desist​‘​ in anything.​“​

And Harris understands that it can be costly and a large use of time.

“Even today, it’s still $1,200,” he said. “But, but I gotta do it, I have got to protect my mark. “When you’re young you don’t have the resources to just trademark everything, but as we grow, we realize that we have to invest in that to make sure that we have that brand.

Snyder said that as EBW blossoms with a new production facility in the works by the end of 2022 which would boost capacity to nearly 10,000 barrels, seasonals and core are going to need to be marked.

A basic search fee is $1,200 and it is another $1,000 to file with the trademark office.

“’I’ve tried to do it myself,” Harris said of the search. “But every time I pay them, they always come back with more information that I can find myself. Like, ‘Okay, yes, you’re better at this than I am.’ But that’s their job.”

Snyder strongly suggests working with legal counsel on these matters.

“The best would be an intellectual property specialty firm, they will do it with no problems,” he said. “They are experts at this, this is the kind of stuff they do every day.

“A lot of business attorneys will also offer trademark registration because there’s not really special training needed to register a trademark. As long as they feel comfortable with it, they can represent you before the final trademark office.”

Snyder added that you can also use online legal services for trademark filings.

“For word marks, probably not a problem. But the thing that requires subtlety, or if you have to correspond with the patent trademark office about what the scope of your mark is, then those services are not going to be very helpful. That’s where a professional is going to be able to give you the most bang for your buck to get you as much protection as you need.

“You might just straight up fail using an online legal service because you don’t know how to respond sometimes to the legality of what is sent back. And if you go to a professional by that time, they might say, ‘Hey, I didn’t start this. I’m not going to finish it.’ Or you’re going to pay more than you originally would have to have them go in and clean up the mess.”

The only issue that Summit had shortly after the brewery started up was that there’s a wine group that has a box wine called, “Summit” and although Stutrud​ said it was in a different beverage category they decided that the brewery would establish its sales and brand equity within its own distribution territories

“We would then follow through with registration,” he said. “That strategy worked so that after we were in business for about eight years we were able to really get our registration for our trademark on a federal level quite handily.”

Photo courtesy Ecliptic Brewing

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