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BRAND PROTECTIONBRAND PROTECTION THROUGH TRADEMARKS
Why Craft Beer Needs the ®THROUGH TRADEMARKS
Brian P. GreggMcNees Wallace & Nurick LLC 100 Pine Street, P.O. Box 1166100 Pine Street, P.O. Box 1166
Harrisburg, PA 17108-1166Telephone: 717.237.5456
Fax: 717 260 1769
© 2012 McNees Wallace & Nurick LLC
Fax: [email protected]
ABOUT MEBrian P. Gregg
I provide practical advice forI provide practical advice for businesses to help protect their intellectual property.
I'm passionate about working with the craft brewing industry.
Brewers Association member.
Home brewer.
© 2012 McNees Wallace & Nurick LLC
WHAT YOU ARE ABOUT TO LEARNLEARN
What trademarks are (and what not trademarks)trademarks). Why early clearance and registration of a trademarks is critical for craft brewerstrademarks is critical for craft brewers. Why the Craft Beer Industry is fertile ground for trademarks disputesground for trademarks disputes.How to avoid spending time and money on trademark disputestrademark disputes.
© 2012 McNees Wallace & Nurick LLC
A HISTORY LESSONConnect Product to Source:
• Early symbols on clay pots• Early symbols on clay pots• Indicates where the pot came from - the
“manufacturer”manufacturer• Better pots worth more money – “good will”
© 2012 McNees Wallace & Nurick LLC
HOW TO SPOT A TRADEMARK
Connect Product to Source:Source:
• Name• Design• Color• Slogan• Other
© 2012 McNees Wallace & Nurick LLC
WHAT ARE NOT TRADEMARKS
Domain Name• greendragonales.comCorporate Name
• Green Dragon Brewing Co.Descriptive termDescriptive term
• Ale, Stout, Lager, IPA
© 2012 McNees Wallace & Nurick LLC
WHY REGISTER TRADEMARKS
Nationwide Rights• Critical for a brewer that
starts local, ensure you can expandS OPrincipal Register at USPTO
• Your mark shows up in searchesYou Can Use the ®
• Signal to others that you own your markSignal to others that you own your markMark is Presumed ValidT bl D d Att ’ F
© 2012 McNees Wallace & Nurick LLC
Treble Damages and Attorney’s Fees
TRADEMARK CLEARANCE
Conduct a Trademark Search
Get the Opinion of Counselp
Ensure You Search Common LawEnsure You Search Common Law Sources Not Just the Trademark OfficeOffice
© 2012 McNees Wallace & Nurick LLC
CLEARANCE/REGISTRATION COSTS COMPARED TO LAWSUITCOSTS COMPARED TO LAWSUIT
$300,000
$1,500-3,000Clearance/ Infringement
© 2012 McNees Wallace & Nurick LLC
Clearance/Registration
InfringementLawsuit
CRAFT BEERALL THE RIGHT INGREDIENTS FOR TRADEMARK DISPUTESALL THE RIGHT INGREDIENTS FOR TRADEMARK DISPUTES
© 2012 McNees Wallace & Nurick LLC
CRAFT BEERTRADEMARK DISPUTE – MAIN INGREDIENTSTRADEMARK DISPUTE – MAIN INGREDIENTS
Exponential GrowthExponential Growth
Local/Regional Distribution with Delayed or Slow Expansion
Other Industries view CraftOther Industries view Craft Beer's Success as a Threat
© 2012 McNees Wallace & Nurick LLC
INGREDIENT 1 - CRAFT BEER INDUSTRY GROWTHINDUSTRY GROWTH
The number of U.S. breweries rose from under 100 to over 1700 in the last 30 years. – Brewers Associationy
© 2012 McNees Wallace & Nurick LLC
INGREDIENT 2 - BREWERIES START LOCAL THEN EXPANDSTART LOCAL THEN EXPAND
Nationwide trademark rights areNationwide trademark rights are critical to long term viability of a brandbrand
© 2012 McNees Wallace & Nurick LLC
INGREDIENT 3 - OTHER INDUSTRIESINDUSTRIES
And they are taking aim at craft beerAnd they are taking aim at craft beer.
© 2012 McNees Wallace & Nurick LLC
ONCE UPON A TIME THERE WERE TWO LITTLE BREWERIESTWO LITTLE BREWERIES
© 2012 McNees Wallace & Nurick LLC
THE GREEN DRAGON BREWING COMPANY WAS SUCCESSFULCOMPANY WAS SUCCESSFUL
The brewery The brewery created a magicalgbeer that everyoneloved.I h b bIt was the best beerin the whole Realm.
© 2012 McNees Wallace & Nurick LLC
in the whole Realm.
GREEN DRAGON ALE WAS SO POPULARPOPULAR
Word spread Word spread about this wonderful beer.K i h k d Knights asked for it by name.for it by name.
© 2012 McNees Wallace & Nurick LLC
BUT ALL WAS NOT WELL IN THE REALMREALM…
The Green Dragon was The Green Dragon was not the only dragon gmaking beer i h R lin the Realm.
© 2012 McNees Wallace & Nurick LLC
RED DRAGON BREWERY WAS FAR FAR AWAY FROM GREENFAR FAR AWAY FROM GREEN
DRAGON BREWING CO.Red Dragon made his beer way on the other side of the Realm.h f h RHe didn't think about using"RED DRAGON"RED DRAGONas part of his trademark, he didn't hcheck to see if that could be a problem.
© 2012 McNees Wallace & Nurick LLC
p
RED DRAGON BREWERY ALSO MADE BEERMADE BEER
R d D Al 't Red Dragon Ale wasn't very good but Red Dragon Brewery made a lot of it.Soon the same taverns were serving both Green
AleAle
were serving both Green and Red Dragon Ales
© 2012 McNees Wallace & Nurick LLC
NOT ALL BEERS ARE EQUALKnights liked GREEN DRAGON ALE but thought RED DRAGON ALE tasted evil.
© 2012 McNees Wallace & Nurick LLC
THINGS ALSO GOT CONFUSING AT THE LOCAL TAVERNSAT THE LOCAL TAVERNS
aleale
© 2012 McNees Wallace & Nurick LLC
THE MORAL OF THE STORY IS…Choose distinctive marks you can defend.Screen and clear trademarks to avoid unnecessary conflicts.unnecessary conflicts.Register trademarks early.Y th "t d k li "You are the "trademark police."Be proactive - others are more likely to change if contacted before making a significant investment in a brand.
© 2012 McNees Wallace & Nurick LLC
RECENT NON-BREWERY DISPUTESDISPUTES
THE BALD EAGLE BREWING COMPANY
© 2012 McNees Wallace & Nurick LLC
TRADEMARK DISPUTESGordon Biersch v Oskar Blues (GORDON)Gordon Biersch v. Oskar Blues (GORDON)
• Forced Oskar to change to GORDON > G-KNIGHTFranciscan Vineyards v Black Raven BrewingFranciscan Vineyards v. Black Raven Brewing Company
• Franciscan blocked registration of BLACK RAVEN BREWING COMPANY based on RAVEN for wine.
Hansen Beverage v. Rock Art BreweryH (MONSTER D i k ) h ll d• Hansen (MONSTER energy Drinks) challenged Rock Art (VERMONSTER beer ) - case settled
Bell's Brewery v The Winery ExchangeBell s Brewery v. The Winery Exchange• Bells opposed Winery Exchange's applications to
register COPPER BELL (with beer) and filed
© 2012 McNees Wallace & Nurick LLC
federal law suit (use vs. registration)
DISCUSSION & QUESTIONS
Brian P. GreggMcNees Wallace & Nurick LLC 100 Pine Street, P.O. Box 1166
Harrisburg, PA 17108-1166
Telephone 717 237 5456Telephone: 717.237.5456Fax: 717.260.1769bgregg@mwn [email protected]
http://www.mwn.com/bgregg/
© 2012 McNees Wallace & Nurick LLC