Nancy Pham is a Lane Powell 2012 summer associate and is currently attending her second year of law school at the University of Washington Law School. She may be contacted at firstname.lastname@example.org.
For microbrewers, taste and memorable names mean everything. Loyal customers often ask for specific brews and word-of-mouth advertising is indispensable, since microbrews are often purchased in local restaurants and bars.
Like many small businesses though, protecting your microbrewery brand and trademarks often raises a basic financial issue: Is it worth it? This brief article explores some cost-effective ways to build your own beer brand identity, while also guarding against the possibility that you may be infringing upon the already established trademark rights of others.
The “Knockout” Search
So, before you begin taking that home brewing hobby to the next level and coming up with the perfect name for your craft beer and perhaps your own brewpub, you should take advantage of some readily available resources to make sure that someone else has not already beat you to the punch.
What you’re undertaking is called a “knockout” search in trademark circles. Your goal is to find a brand name that is not confusingly similar to other products already on the market for beers or other products that may be related to alcohol or beer consumption. The goal of trademark laws is to prevent confusion among consumers as to the source or origin of products or services.
While it may seem tempting to be playful and incorporate someone else’s famous trademarks on your microbrew label, you should avoid that form of potential instant name recognition. Famous marks are protected from having their commercial impression diluted by even unrelated goods or services.
Likewise, the owners of famous marks can prevent “tarnishment” of their marks by use on products they deem to be unsavory—alcohol being a common such product. Owners of famous marks often have the financial means and incentives to pursue even small-time poachers of their brands.
In the age of robust Internet search engine capabilities, the good news is that a simple knockout search only requires an investment of your time.
First, visit the United States Patent and Trademark Office website. Running a free Trademark Electronic Search System (TESS) search will come up with all federally registered trademarks (with a margin of error based on search terms or how marks may have been categorized in that database).
Second, a similar search should be conducted for state-registered trademarks. Each state varies and while there are currently no TESS-equivalent knock-out searches available in Washington or Alaska, Oregon does have its own trademark search. This is another reason why a thorough Internet search is valuable, since it is more difficult to research state-registered trademarks.
Third, because trademark rights under common law accrue automatically when they are being used in commerce, a search on the Google, Bing, or other search engines may also provide useful information about business websites and social media pages that are using trademarks that may be protectable, even though they are not registered in state or federal trademark databases.
You’ve Explored the World Wide Web. Now What?
There are several scenarios that can happen after a knockout search is performed: