If you encounter a wine and a beer with the same brand name, would you assume that they came from the same company? Would you think your favorite winery had expanded into the beer market, or your favorite brewer had begun bottling wine as well? This is the essence of a longstanding issue in trademark law. The US Patent and Trademark Office (USPTO) tends not to allow a trademark application for beer to proceed if the same or a similar mark is registered for wine, and vice versa. Does this really make sense? And what can be done about it?
My regular readers know that I often write about craft beer trademarks. The market for craft beer is exploding here in San Diego (which we like to call The Craft Beer Capital of the World) and elsewhere. Brewers often produce many different types of beer – it’s not unusual for even a small brewer to produce dozens of different styles. Some are part of their regular line, some are one-offs. But they all need to be called something.
Of course, a brewer could just call their beers Dave’s Pale Ale and Dave’s Stout, but those aren’t the most catchy names, are they? I think you see what I’m getting at – craft brewers are generating as many brand names as they are beers. Inevitably, this leads to trademark conflicts just within the beer industry.
Now let’s think about how many wines are on the market. If you’ve ever been to a wine store, you know it’s a lot. Gomberg, Fredrikson & Associates apparently tracks over 15,000 wine SKUs.
“But wait,” you say, “I never think of wines and beers as related products.” Well, try telling that to the USPTO.
Consider one recent case. A brewery named The Bruery (full disclosure: I’m a fan of their products) applied to register 5 GOLDEN RINGS as a trademark for beer. It’s part of their seasonal collection. It turns out, however, that there’s a prior registration for GOLD RING for wine. The USPTO Examining Attorney rejected the 5 GOLDEN RINGS beer application on the grounds of likelihood of confusion with the GOLD RING wine registration.
Let’s assume that the word marks 5 GOLDEN RINGS and GOLD RING are sufficiently similar as to cause consumer confusion if the products were related. That leads us to the question: would consumers be likely to assume that a wine and a beer with similar names emanate from the same source?
The USPTO’s Trademark Trial and Appeal Board (TTAB) said yes, affirming the refusal to allow the Bruery’s application to proceed. The TTAB found persuasive the following points made by the Examining Attorney:
[E]vidence from ten different wineries and breweries…demonstrates that the same entity commonly manufactures/produces/provides the relevant goods and markets the goods under the same mark…[C]opies of twenty [trademark] registrations for similar goods as those of the applicant and registrant…demonstrate that beer, malt liquor beverages, wine and other alcoholic beverages are the type that may emanate from a single source.
So, the TTAB took the fact that 10 winery/brewery combos, and 20 registrations listing both wine and beer, were sufficient to support a claim that consumers are likely to believe that similarly-named wine and beer products come from the same source. There were almost 3,000 breweries in the US alone by 2012, and certainly there are more now (source: Brewer’s Association website.) There are over 8,000 wineries in North America (source: Wines and Vines.) In the context of the wine and beer industries, numbers like 10 and 20 are so small as to escape notice.
At this point, it’s important to point out that there are many registrations for similar, and even identical, registered trademarks for beer and wine where the breweries and wineries do not appear to be related. For example, ALCHEMY is registered for wine and for beer. Some more examples can be found here. I’m certainly not the first to point out that the USPTO’s posture with regard to this issue is inconsistent at best and ridiculous at worst. Here’s trademark attorney Erik Pelton writing about the same issue in 2011.
So What’s a Brewer to Do?
This issue creates a great deal of uncertainty when a brewer (or wine maker – and I haven’t even brought up other alcoholic beverages, even though the same issue applies to the whole category) attempts to name his or her products. Not only do they have to make sure that no other brewers have been using that brand name, but they have to do the same with other, tangentially-related products as well. That may be good for trademark lawyers, but it’s bad for the industry and it doesn’t do what trademark law was intended to do in the first place: protect the interests of consumers.
It’s important to recognize that nobody’s arguing that you should be able to name your wine BUDWEISER or your beer CRISTAL. Trademarks with that level of name recognition are already well-protected. As usual, it’s the small business that’s paying the price here.
To avoid these problems, brewers are advised to bite the bullet and invest in trademark due diligence when they’re bringing products to market. A beer that appears on a few taps might fly under the radar, but once your bottles and cans are on liquor store shelves, you’d better have done your research.
When these issues do arise – and you can be sure that they’ll continue to do so – brewers should consider fighting USPTO rulings of this sort (although, of course, that means more legal fees and less money to invest in making quality beer.) If we could get some precedential rulings going the other directions, we might be able to resolve this issue once and for all and lower the barriers to entry for new, innovative beer products.
