As the world of craft beer becomes ever more litigious, I get advice from legal experts on the risks facing UK brewers with regard to trademark and copyright law when exporting to the US.
Beer is a form of cultural currency. I first heard this concept from the lips of Garrett Oliver in his keynote speech at the European Beer Bloggers Conference in 2013, and it really affected me. Looking at the world’s best beverage through the eye of a cooly distant observing scientist reveals that it tends to go where civilisations go, and according to some, may have been crucial in encouraging the nomadic wanders of early humankind to settle and found civilisations in the first place. As beer styles and the ideas behind them have travelled across the globe, first by word-of-mouth (or chiselled Sumerian tablet), then by road, ship, rail, sky and now instantaneous communication, we live in a world of beer that is incredibly connected.
That inter-connectivity has brought with it some fantastic collaborations, but occasionally results in the equivalent of bumping into someone who is wearing the same clothes as you. Legal disputes have become the unpleasant aftertaste to the diverse flavours of craft beer’s meteoric rise, and those over intellectual property (IP) and trademark law are some of the bitterest. Whilst we all know of the more high-profile cases, it’s become a concern to me recently that the fastest-growing of the smaller brewers take their first steps into the export market could find themselves suddenly and catastrophically in costly legal trouble. Some have cottoned on to this risk, others have found out the hard way. As an example, Wild Beer Co’s Ninkasi had to be sold under a different name in the States to ensure Ninkasi Brewing wouldn’t take issue.
Of course, I’m not the only one thinking about this. Brendan Palfreyman is an attorney with Harris Beach PLLC in New York, and a major focus of his practice is representing and counselling breweries in the US and abroad on legal issues in the US, including trademark and copyright. Brendan (who you can follow on Twitter, and I recommend you do) is also an award-winning homebrewer and an Allied Member of the New York State Brewers Association. I asked him a few questions about the legal risks faced by UK brewers exporting their beer to the US.
What are the most crucial legal concerns that UK brewers should be aware of regarding trademark and copyright law before exporting their beers to the US?
“The critical body of intellectual property to be concerned about in this regard is trademark, not copyright. Copyright can play a role, but it’s typically not a major one in beer-related IP disputes. Copyright could come up, for example, with regard to label art/design. Trademark, on the other hand, pertains to brewery names, beer names, logos, and the like.
The most important concern is that a UK trademark will not protect a UK brewer in the US. Another issue is the potential infringement of pre-existing federally registered trademarks – the test in the US is called likelihood of confusion and it is a multi-faceted analysis.
Additionally, a pre-existing federal trademark can be used to prevent the importation of goods, including beer, at the border by US Customs and Border Patrol. This can be devastating for obvious reasons to a UK brewer seeking to export to the US.
Another key issue of which UK brewers should be aware is that the US Patent and Trademark Office has determined that beer, wine, spirits, and likely even cider are related for trademark purposes. What does this mean? If there is a preexisting US registered trademark for Ladybug for wine or vodka, it would in all likelihood prevent the registration of the trademark Ladybug for beer.”
What can UK brewers do to prevent or remedy these potential problems?
“The two most important things that can be done are proper trademark searching and federal trademark registration. Trademark searches can informally be run on Google and beer rating sites like BeerAdvocate and RateBeer.
The most important trademark search is done on TESS, or the Trademark Electronic Search System, which is the federal government site. The searches can be somewhat complicated because it’s not just exact matches that can cause problem. For example, a search for Red Road should also cover Red Street, Road Red, Rad Road, Scarlet Road, etc.
Generally, trademark filings in the US are the best protection a UK brewer can have. The brewery name is essential, and likely each of the beers that will be imported in any quantity as well.
If a UK brewer already has a UK registered mark, he or she may be able to use that as the basis for a US trademark. A UK brewer may also wish to take advantage of the Madrid Protocol, of which both the UK and the US are parties. This allows parties to file a single international application based on at least one preexisting registration, and then to use that to file individual applications in different countries.
Finally, in the US, one can file an ‘intent-to-use’ application up to 2.5 years before actually using the mark in commerce.”
Are you aware of any examples where a UK brewer has done exactly the right thing?
“Samuel Smith. They own, among other trademarks, US Reg. No. 1,341,336 for SAMUEL SMITH for beer, ale, stout, and porter. They filed this mark on August 16, 1984 and have maintained the mark in the intervening time.”
Do you expect to see a lot of high-profile legal action in this area in future?
“Absolutely, there are over 3,800 breweries in the US at present and the numbers are growing every day. This does not take into account the hundreds of breweries importing into the US. As these numbers continue to grow, trademark disputes are likely to grow as well.
Just recently there was a major and brief lawsuit between big craft beer players Sierra Nevada and Lagunitas. There was also lawsuit filed in New York recently by Canadian brewer Moosehead against a small NY brewer that makes a root beer called Moose Wizz.
Fortunately, a lot of such disputes are worked out brewer to brewer, often over a pint, and often times the brewers decide to do a collaboration beer rather than to fight it out in court.”
That final point Brendan makes, working things out over a pint or collaboration brew, is really the attitude that needs to be encouraged over defensively or offensively ‘lawyering up’. Whilst that hasn’t always been the case in disputes here in the UK, it’s reassuring to know that legal experts here take a broadly similar view. Nicholas Mitchell is a solicitor at White & Black Legal, and recently wrote an article for the firm on beer-naming disputes that have flared up over here. The key message is be conscientious, practical and reasonable, as demonstrated in the following:
In an industry where over a thousand breweries are regularly launching new beers, without always taking advice, there will always be accidental conflicts over names. However, such issues can be resolved in a reasonably civilised manner and without adverse publicity, for example when Thornbridge Brewery agreed to alter the name of their black IPA “Raven” to “Wild Raven” following a request from The Orkney Brewery, which brews a bitter called “Raven Ale”.
As Nicholas points out, “in an industry so dependent on social media, it is advisable to approach naming disputes in a way that does not leave a bitter taste in the mouth of consumers.”
Cheers to that.