MicroBrewr 044: What every brewery should know about trademarks
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There are so many stories about breweries in trademark disputes. The last thing you want is to get sued or pay legal fees to protect yourself. Paul Rovella is attorney and partner at L+G, LLP Attorneys at Law in Hollister, California. He tells us all about trademark issues for your brewery.
Although “common law” provides some protection, you are still at risk.
One especially painful story is that of Backshore Brewing Co. The owner, Danny Robinson told us on MicroBrewr Podcast 041 that he had to change the name of his brewery—and he was still sued for $800 thousand and has already racked up $500 thousand in legal fees.
Some other breweries who have shared their trademark issues on MicroBrewr have included Opposition Brewing Co. (episode 16) and Ferndock Brewing Company (episode 39).
Here are some basic steps to protect yourself:
- Use the U.S. Patent & Trademark Office’s search tool to see whether someone else is already using the name you want.
- File for a trademark.
- Use photos or documentation to prove when you start using your business name and your trademark.
“The importance of trademark registration is actually enforcing,” says Paul, “which could be a time consuming and an expensive endeavor.”
There are other options besides suing to protect your brand.
“I always encourage my clients to try to deal directly with their adversary,” Paul advises. “Because then you’re not paying an attorney to create more paper to send to another attorney.”
From the least strenuous to the most, here are the best options for enforcing your trademark:
- Make a polite phone call to the person who is using your trademark.
- Send a cease and desist letter.
- Get a restraining order or injunction and get a judge to make them stop.
PLEASE NOTE: Nothing on this podcast should be deemed legal advice. If you have any questions about the discussions or subject matter of this podcast, you should consult an attorney.
“Smaller businesses gotta be a little more diplomatic in getting someone to stop using your label.” [Tweet This]
If you could ask one question to every brewer or brewery owner, what would you ask? Let me know.
- California State Bar Court Reporter.
- The Art of War by Sun Tzu.
Check out the entire list of recommended books, click here.
An upcoming beer style:
Ginger beer soda
- It’s the Law: Trademark, service mark, patents and copyright 101, Part 1, Paul Rovella L+G, LLP, San Benito County Today, August 1, 2013.
- How to apply for a trademark / service mark, Paul Rovella, MicroBrewr, January 8, 2015.
- Trademark Electronic Search System (TESS), U.S. Patent & Trademark Office.
- Official Gazette, U.S. Patent & Trademark Office.
- Hollister, Calif., is at odds with Abercrombie over name, Hugo Martín, LA Times, April 24, 2009.
- MicroBrewr 038: Learn the classics and stay true to your genre, MicroBrewr, December 2, 2014.
- Empire Brewery Lets Lucasfilm Feel Its Force During Trademark Dispute, Rudner & Laeeudis, LLC, New York Liquor License Law Blog, January 6, 2015.
- Breweries Are Running Out Of Names, And Into Legal Spats, Alastair Bland, The Salt and NPR Food, KQEG, January 5, 2015.
You can reach Paul Rovella and L+G, LLP Attorneys at Law at:
Image showing 3D Judges Gavel by Chris Potter on flickr (CC BY 2.0) was modified from its original state. (www.stockmonkeys.com)
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