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Breweries and Trademarks- A Conversation

Breweries and Trademarks- A Conversation February 19, 2020

By Joe Whitcomb

breweries-trademarks

1. [Introduction]

We are Whitcomb, Selinsky, PC a law firm situated in Section Denver Colorado and with me I have a Brandon Selinsky the Selinsky in our name. The other named shareholder in our law firm. Over the next 15 minutes or so, what Brandon and I plan to talk about is just some intellectual property issues. Brandon has a particular interest in working in the trademark space with brewers in particular and he's already started doing some of that in Denver Colorado. Welcome Denver, welcome Brandon. Thanks Joe. So, Brandon first do a little bit of an introduction. You like me we're not born in Denver Colorado.

Beer and trademarks take 2-Final JAW_compresed

Brandon:

I am originally from Northville, Michigan, came out to Denver about 16 years ago and I had gone to law school in Nebraska and finally made my way out west of Denver by about 2005. Anyway, so Joe said I am the Selinsky in the Whitcomb Selinsky. My practice is generally focused around administrative law which includes Social Security and VA disability and any other kind of administrative practice or administrative work that we do. I also do trademark law. I got interested in trademark law by working with breweries and trying to figure out what their needs were and how we could serve them and one of the biggest things almost immediate things that a lot of breweries need is help with trademarks.

Joe:

So, let me stop you there, I'm a brewer I'm situated here in Denver Colorado. Are there many breweries in the Denver Metro area?

Brandon:

The short answer is “yes” there are about 300 breweries in Colorado now. I think it’s a little better than that.

Joe:

So, it's a competitive space.

Brandon:

It's a competitive space and there are more breweries almost every day.

Joe:

So, but if I'm a brewery in Denver Colorado and I have, it's called a tap room, right? So, I have a place that I brew beer.

Brandon:

That's right.

Joe:

Why do I care in particular about trademark?

Brandon:

Well first of all, since you brought it up, a tap room is a specific term. A tap room or tasting room; that's where you sell your beer. If you make beer and make it only, you're not selling it in your space then you have a manufacturing plant. That's a difference in Colorado. Those are different licenses. So, let's say you have a tap room and you're selling your beer you're making your beer you're moving it over to the tasting room side and then you're selling it. For each of those beers each of those beers needs to have a name. Each of those, so that each beer needs to have a name. Your brewery needs a name. You might have names or logos for other elements of what you do as a brewer. And so, every time you come up with a new beer you need a new name and that name can't be the same name as any other beer. If it is then you might run afoul of somebody else’s trademark.

Joe:

So, I got a question for you. I'm gonna branch out for a legal business. I'm going to start a brewery here in Denver Colorado. And because I'm sort of important gentlemen I decided I want to call that brewery Whitcomb Brewery. Should I run right out in trademark Whitcomb Brew.

Brandon:

Well you can but you can't trademark like you think you can. There are two.

Joe:

How do I think I can?

Brandon:

You think that you can run out to the USPTO and register your trademark and you can for a lot of different things, but the specific trademark that you have suggested here, Whitcomb Brew, that can't be trademark on the regular what they call the principal register of the USPTO. The USPTO is the United States Patent and Trademark Office.

Joe:

There's somebody already owns Whitcomb Brew?

Brandon:

No that's because anybody named Whitcomb can use the name Whitcomb Brew. So, the USPTO wants to make available surnames. If you use your last name and brewery or beer works or whatever it is, the PTO will not let you register it, because the idea is there are other people with your last name they have to be able to use their name. And so, absent some extra showing, you can't you can't register your last name. However, you could go to the Supplemental Register you can register in there. So, you could put Whitcomb Law, Whitcomb Brew on the Supplemental Register and then after five years if you're still in business, and hopefully you are, you can roll that over to the Principal Register.

Joe:

Well when I was growing up a lot of people who confused my name and call me White Comb, so what if I wanted to be creative and call it “White” space “Comb” COMB Brewery.

Brandon:

You can do that.

Joe:

What about, is a problem using the word “white” and trademarking the word white?

Brandon:

If you trademark that entire name “White Comb Brewery” you may have to disclaim part of that. You don't have the exclusive right to the word “white.” You don't have the exclusive right to the word “comb.”

Joe:

Seems like I could own the word “white.” Why can’t I own the word “white?” Seems like the guys who made my iPad, they own a piece of fruit don't they? They own “Apple.”

Brandon:

That's right they do they own Apple because they're using Apple in a way that no one before them has used it. The word Apple doesn't really apply it doesn't relate to electronics at all.

Joe:

It does now.

Brandon:

It does now yes. Before they started it didn't. So, you may have to disclaim part of it really in your example you probably would have to disclaim the word brewery. White and comb you might not have to disclaim but the word brewery you have to because you are brewery.

Joe:

Well people was able to people don't typically think of beer when they think of a white comb right?

Brandon:

That's right, they don't. Until your beer comes around makes that connection just like apple did.

Joe:

And it would be an amazing beer.

Brandon:

I'm sure it would be.

Joe:

The disclaimer I've never ever made a beer not successfully. So, but you’ve made beer.

Brandon:

I have. I’ve made lots of beer.

Joe:

So, you've been a beer guy you’ve been what I like to affectionately now call a beer nut, you've been a beer will use the word is aficionado, you been a beer aficionado for about how long?

Brandon:

Well I've been brewing for about four and a half years, well about five years. But I've been a beer nerd or a beer nut for going back to before I was legally allowed to consume beer.

Joe:

All right so full disclaimer if you are with the FBI the statute of limitations has long since run. Brandon's drinking a beer before he was 21. You have a favorite kind of beer or a favorite or beer you stay away from?

Brandon:

I don't generally drink I'm not gonna say in this video that I don't think IPAs, because I don't want to alienate most brewers. I’d rather just talk about what I like. So, I tend to gravitate towards big rich Multi stouts; particularly what people like to call pastry stouts. I love those. I don't get to enjoy them very often, because 17 or 18 percent it's a little harder to take down one on a school night. But also, on the other end of that spectrum I really like nice light beers particularly funky and fruit-forward beers like sours and things like that.

Joe:

This is something that Brandon I, we know you don't know but we now we have in common. I the more pastry the better on the Stout side. So, the more things you throw in at coffee barrel-aged super dark, dark as motor oil, I love that stuff. I’m a big fan. And the fruitier and the in the world of sours the more sour, the more tart sours are I’m a big fan. So, you represent a couple of brewers I know we can't talk about those online because of our nondisclosure agreements and that kind of thing but what kind of services besides trademark have you afforded any of those brewers.

Brandon:

We have a whole beer law line here at Whitcomb Selinsky. It's called Beer Law HQ and we do everything for breweries. We got into it by taking some trademark cases and then realizing that breweries have other needs. Those needs include real estate contract reviews. They include TTB licensing and state licensing. Everything that you need to do to be able to make beer and then sell your beer we can help you with that.

Joe:

Do breweries have any other liability issues?

Brandon:

Plenty. It is a high hazard industry and so OSHA regularly looks over the shoulder of Brewers. They do on-site evaluations. And when you go into one of those evaluations you need to know what OSHA is going to be looking for and what you need to do to prepare your brewery so that you don't get tagged. We can do that.

Joe:

So, we've got a guy here named Tim. He does some workplace safety issues. He came from the Department of Labor and that worked in that workplace safety. Is he a guy that you would go to if you found a workplace safety issue?

Brandon:

He’s our guy that's right. He is our OSHA guy. So, if you have any questions about OSHA; what they look for; how to avoid getting cited and what to do if you do get cited. Tim is your guy. He'll be able to help you through that process so that you come out the other side still making beer and still do it okay.

Joe:

So, I want to go into trademark thing in a slightly different angle. Let's assume you and I started White Comb Brewery and you and I hired you Brandon and hey do me a favor man, you know for money go register that trademark for me if you can. And low and behold you go out; you just go out and register it? What do you what do?

Brandon:

The process of registering a trademark, is before you do anything, before you put that label on a beer, before you put the name on the internet, run it by somebody. Do your research. You want to do a search to see if that name is available. If you do that search and turns out that three other breweries are already using that name you're probably not going to be able to register it or if you can you might get some pushback from one of these breweries and you'll probably be in a worse position than they are because they're already using it. So, step one you do a search. You can hire me to do that or somebody who looks like me. Have an attorney do it. Or an independent third party do that search and see what turns up. If nothing turns up, great. You go to the next step. But it's important to note that when you do a search what you're looking for you're looking for what you are not going to find. You want a clean bill of health. And so, if you plug that into Google and nothing comes up that doesn't mean you have a clean bill of health. There are several other databases. You can use the PTOs own database (TESS). You can use “Untapped.” you can use number of other beer databases. But what you really want to know is that there's nothing to know. And so, the idea is you have to be very thorough with that search. So, if you get passed up one and you get that search done you got a clean bill of health then you go to step two and you file a trademark file. To file the trademark basically it's advanced paper-pushing you got to fill out a form online and you submit that form to the USPTO. There's a filing fee and once you do that then it sits for a while.

Joe:

Great, then I'm done I get my trademark filed and I have White Comb Brewery.

Brandon:

If only, if only, White Comb Brewery that application will go to the PTO. In about three months after you file it, the PTO will put an attorney it, and attorney examiner. That person will do their own search and particularly in their database it will do an internal search. If I hit comes up, then you probably get an office action. So, if um.

Joe:

That doesn’t sound so bad, and office action. That sounds like I get to go to an office.

Brandon:

An office Action is done generally in an office but that's not always that great. And it depends because it runs the gamut. You might get an office action saying well there's already Blue Comb Brewery and Blue Comb Brewery sounds too much like White Comb Brewery it might confuse consumers.

Joe:

So those two things don’t sound anything alike. One’s White one’s blue that's clearly different.

Brandon:

That's right the pattern is the same. That's all you have a color you know something to adjust your hair and then followed by brewery and the PTO generally runs on the conservative side. If they think that it is likely to confuse consumers (that's the standard that they use, likelihood of confusion) then they will deny you. But that denial, that initial denial is temporary, and you have the opportunity to come back and make some arguments and say blue and white not the same. Maybe it's blue brush brewery. Well brushes and combs are not the same. Blue and white are not the same and you can make arguments however technical or not about how they're wrong. And sometimes the PTO will come back and the attorney examiner will say “hey you're right my bad those really are not the same.” The standard you meet the standard and we're gonna send you on to the next step. So, if that happens great. About three months to get that first response. And then they push you through before the next step. The next step is publication. So, the PTO has a publication that they publish all the new marks in or new potential marks. So, if you register, your mark goes in the publication and then everyone in the world has the opportunity to look it up and to see if your mark runs afoul to theirs. That's the whole idea the publication puts everybody on notice so if Blue Comb Brewery already exists and they see your publication White Comb Brewery they can write the USPTO and say “nope” that's too much like our mark and they can file an opposition. If you get an opposition that's it's basically litigation. It's a third party saying your mark does not qualify as a trademark. So even if the PTO thinks that you're good to go, a third party can write in and oppose it. And you there's some limited discovery that can happen in that time. There's a hearing in front of a judge and there's a verdict, there's a judgement. So that's another possible obstruction, a possible stopping point for your mark. But let's say you get past that. You get published no one opposes. At that point the USPTO will write you and let you know, and you'll get a certificate in the mail you have a registered trademark.

Joe:

So, then I'm good to go. White Comb Brewery is now trademark and I can forever rest on my laurels knowing that I own that trademark?

Brandon:

Joe, I'm glad you asked that. Of course, no. Trademarks are only as good as long as you use them. So, if you filed for a trademark and there are two different kinds. Broadly two different kinds that any brewery might want to file. There's what's called a 1A and a 1B. A 1A application means that you're using that mark. You're using it in commerce. Meaning you're selling a beer under that mark whether it's the name of your brewery over the name of the beer or another product. A 1B is an intent to use mark. And that means that you have not used it yet in commerce, but you plan to. And you might get your foot in the door. So, you file that 1B application and if that goes through then it won't register until you actually use it. So, if you get through the publication phase and no one objects to it, no one opposes it, it will sit and wait for you to file another document says, “yes I'm using it.” And you have to re-up that every six months. So, you have six months from the time that they approve it to the to when you either have to asks for more time or show them, show the PTO that you're using it in commerce.

Joe:

So, I have a more serious question. I have I've got my trademark I'm using it; I'm selling billions of dollars’ worth of beer from my tap room you know maybe per decade but I'm selling lots and lots beer. And I noticed that a friend of mine in North Carolina sends me an email that says hey you're not going to believe this I came across your brewery near my home I didn't realize you that opened up another White Comb Brewery near my home in North Carolina. I scratch my head and realized that I have not opened a White Comb Brewery in North Carolina. What can I do?

Brandon:

You can prevent this new White Comb Brewery that’s not you from using your mark. If you have a registered trademark and somebody else is trading under your name you can stop them from doing that.

Joe:

What if they didn't know. It was an innocent mistake. They just started using it one day. They didn't do any of the things that you suggested at the beginning. They just hung a sign. They did a google search, hung a sign and they haven't tried to register with the PTO they just registered the trademark or didn't register the trademark just started using it. Then what?

Brandon:

In that case the first thing that you do is you send a letter, send them a what do they call CMD or cease and desist letter. You let them know that you have a registered trademark they are infringing on that trademark they need to stop.

Joe:

But they write me back and you're like Joe and listen I'd already pay for the signage; I’m already selling beer you know go away.

Brandon:

Don't go away you need to prevent them from using that mark if you don't you can lose your rights to that mark. If you just do nothing at that point and this new White Comb Brewery out east continues to operate then the value of your mark and the power of your mark is reduced and let's say a third party uses White Comb Brewery and they pop up out west. Now there's a third White Comb Brewery, you're gonna have a lot tougher time enforcing your mark against this West Coast White Comb Brewery because you failed to enforce it against the East Coast one that came along first. So, you need to stay on top of your market that you need to enforce it.

Joe:

How do I do that man I'm selling beer left and right I don't have time to stay on the internet and police every corner of the universe to make sure that my that no one's using White Comb Brewery or what if somebody starts selling White Comb beer. Is that an infringement on my trademark?

Brandon:

So, you have two questions there really, two distinct questions.

Joe:

You can object.

Brandon:

I will, and I’ll just answer them both. The White Comb Beer is too much like White Comb Brewery. So again, we go back to that standard of consumer confusion. Our consumers likely to think that White Comb Beer is from the White Comb Brewery sure that's an obvious one. The name is the same whether it says beer or brewery that's de minimis as they say in the legal field that's it's not much of a difference and people are likely to think that those came from the same source. That's what a trademark, is it's an indication of the source of a product or service. If a consumer is confused about what that source is then then you need to enforce your trademark. So, going back to your example or your question.

Joe:

How do I manage I how do I keep my arms around who's using my trademark?

Brandon:

You have to look, or you need to have somebody who will look.

Joe:

Do you that Brandon? Do you police those kinds of trademark?

Brandon:

Well I do. It just so happens yeah so and we do it we'll do it periodically I don't look up every mark every day but periodically we'll look up marks and make sure that our clients marks are not being infringed upon and there are different levels of doing that. So as I mentioned before one of the things you can do is just google it throw that into Google and if something comes up and these days it probably will somebody's operating a brewery similar they're gonna have a presence on Google but an even better resource is “Untapped” because it's so immediate and it's so worldwide if you open a brewery down the street something walks in there and has a beer and they put it right on “Untapped” there's a record of it. There's a record somebody sold a beer under this name. So, use ‘Untapped”, check it out periodically or have me check it out periodically make sure that no one is drinking a beer with your name, that’s not your beer.

Joe:

Brandon, I thank you for coming all the way from your office which has to be a good 150 feet away from here.

Brandon:

I brought water.

Joe:

I appreciate that. we're gonna that's gonna be it for our broadcast today but I am gonna ask to ask Brandon back again because he works here but also because the next time we get together I'd like to talk about so many other issues that beer or Brewers or breweries might run into but also I want to talk about international trademark. And that next time we get together and I like to talk about if we White Comb really goes crazy, if White Comb Beer really goes crazy and I want to start selling that beer in Europe. Do I have the ability to trademark. et over there so I will keep that as in for suspense for the next time again I thank you all for tuning into that this law I'm talking to Brendan Slutsky my partner at all in crime here have a great day [Music]

Tags: Trademark Law

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