On September 10, 2018
I first met Michael Jonas of Rational Unicorn Legal Services LLC when I attended his seminar in Portland about trademarking. It’s one aspect of distilling that I know often comes up: distillery trademarks. Should you trademark your name, your logo, your products? If you have a Certificate of Label Approval (COLA), that approval isn’t that going to protect you in terms of securing brand protection and clearing you from infringing other people’s trademark rights. For that you need a trademark! I asked Michael Jonas four questions that will help you better understand trademarking for your distillery. If you have questions, Michael gives free 30-minute consultations so feel free to contact him directly with questions.
I’ve heard distillery trademarks are expensive. Do I really need to trademark my distillery name?
Protecting ones intellectual property is always a choice. I’m somewhat biased as I’m an attorney who files trademarks, but I believe it is the right choice. Trademarking your distillery name will tell all involved that you are serious about your name brand and your name brand’s integrity. It will also allow you to stop others from infringing and if needed recoup damages from said infringement. I could send a cease and desist letter for a client without their name trademarked, but think of how more effective it will be, if it is. It tells the possible infringer that you have federal protection and that you are willing to protect it.
On the other side of this, during the trademarking process you learn about other trademarks that exist that may be “confusingly similar” to yours. What if you are currently the infringer/one infringing and you don’t know that? Better you find out now and alter your name then you make tons of beer and beer related products and packaging that all needs to be changed. As you can see the cost is worth it as it’s an act of being preventive and ready vs. being in a bind down the road. And the results of not trademarking could actually be more costly than trademarking itself.
What’s the difference between trademarking my logo and my name? Aren’t they the same?
Trademarks are filed with the United States Patent and Trademark Office (USPTO). They treat your name and your logo as two separate trademarks. Your name is called a “Standard Word Mark.” And your logo is called a “Stylized Design Mark.” Both require their own protection and separate trademark applications. The difference is your name is just that, your name. Say you’re called Hopping Frog Beer (I just made that up but maybe it’s a real brand). And another company is called Hop Frogs Beer. Your successful registration of your name would stop the other company from doing business with that name. However, say you both have a logo with a frog drinking beer. If you hadn’t also filed a stylized design mark/logo mark, they may still be able to use a logo similar to yours and with a different name. As you know graphics are sometimes the recognizable commerce features not always the names. You would want both protections here–the name and the logo.
What’s the difference between a distillery trademarks, and trademarking the individual products I make?
As mentioned a name and logo are two different trademarks. A third would be the name in a fancy or stylized font. Many distilleries and other companies trademark these items but they also trademark names and/or logos of specific beers. Why? These beers become identifiable in public. One would hate to see a beer or whiskey on the market with the same name that is not as good. If you had protection for the name of the beer or whiskey you could stop the other brewer from making a similarly named beer that dilutes (no pun intended), the delicious nature of your beer and your brand.
So, it’s a choice of protecting no intellectual property, some of it, or all of it. And the famous legal answer to most questions is, “It depends.” With most clients I talk to them about their business and products. Then, we discuss options for intellectual property protection and what those processes may look like.
What if we’ve been a distillery for 8 years already? Is it too late to trademark some aspect of our business?
No, it’s never too late. Some of my clients are just starting out and some have had their business for 10 plus years. It’s important to start off here that the trademark office gives two options for filing: Intent to Use or Currently in Use. This allows even those who are getting ready to start their trademark application process. They then can provide their proof of use in commerce at a later time than than when the application is filed. An 8 year company would have plenty of proof of use in commerce.
With every trademark client I do a no cost “trademark knockout search.” We can never predict what the trademark examiner may find, but this allows us to see if there are any glaring obvious marks that may be similar or road blocks to trademarking. For a company that has been around for 8 years I would most likely do a more in depth knockout search. A longer company duration may actually lead to stronger reasons to trademark. You know your company name and brand are solid, you are keeping them, and the company is here to stay.
Is there anything we can do if a distillery names its whiskey product the same name as ours, which we released first?
Again the famous legal answer is it depends. The answer is it is possible and there may be things to do. However, I would need to look closer at the issues, the facts surrounding those issues, the related laws, and then decide. Usually in law and in life there are options. It’s always a question of which ones and which one is best from the lot.