Do I Need To Trademark My Business Name?

You do not need to trademark your business name just to operate, but you should get trademark clearance if you want to protect your brand identity or want to grow your business for nationwide protection. Trademark registration of your business name gives your business exclusive rights against trademark infringement, statutory damages, and avoids consumer confusion. Corporate registration may give you limited brand protection and limited common law rights against unfair competition. However, a trademark search and USPTO filing of your distinctive mark give you enforcement and licensing rights.

Trademarking in the alcoholic beverages industry can be even more complex. Beer, spirits, and wine are considered the same, or substantially similar, products. This means that any mark or branding must be unique across all three industries. This can, in turn, create quite the headache for some. For legal help, speak with an intellectual property lawyer.

Testing for Trademark Infringement in the Alcoholic Beverage Industry

The craft beer, spirits, and wine industries are becoming increasingly more crowded. The alcohol industry is now a multi-billion-dollar industry, with more breweries, distilleries, and wineries popping up each year. But as more producers enter the space, branding-related legal issues become more complex.

A good test for trademark infringement is the likelihood-of-confusion test, which compares:

• The marks
• The goods and services provided under the marks
• The level of sophistication of the consumer
• The channels of trade
• Evidence of actual confusion

Each time a mark is offered to the U.S. Patent and Trademark Office (USPTO), there is a subjective weighing of all these factors.

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Using the Same Mark for Different Alcoholic Beverages

For alcoholic beverages, the USPTO and the Trademark Trial and Appeal Board (TTAB) classify them as one related good because consumers might be confused about whether one is the source of the other. So, practically speaking, if there is the same mark (or a substantially similar mark) being offered for beer as for wine, the USPTO will refuse one or the other.

“There are ways around this hard and fast rule,” says Thomas J. Romano, an intellectual property lawyer at Kolitch Romano Dascenzo Gates in Portland, Oregon. “Sometimes you can come to a consensus with the other party, and sign agreements to limit your business’s scope or area, which is called ‘concurrent use.’ Either party can consent: ‘I’ll only use it for wine; you only use it for beer.’”

What can truly hurt you, though, is if you’ve already built your business around a brand and someone challenges your use of their mark.

“We can’t always overcome direct hits,” says Romano. “In our experience, the way the law is developed, if you don’t have one of the legal defenses or compromises available, and you get a direct hit, and there’s no other marks in your area, it’s really difficult to overcome.”

Dealing with Trademark Disputes

The issue isn’t always with a competitor, either. “You may never get sued by a winery if you’re a brewery, but you do lose the ability to get a national registration,” says Romano.

“Without a national registration, you lose nationwide protection. Often, craft breweries don’t distribute nationally because there are tons of restrictions and regulations in doing so. Chances are they aren’t going to distribute in all 50 states, and that leaves them vulnerable to someone stepping in where they aren’t distributing and setting up a competing brand.”

Some of the major concerns about speaking to an attorney are driven by cost, which doesn’t need to be the case. According to Romano, a small business can almost always get a free inquiry to at least know the options. But he advises against asking whether your brand name is good. “I can tell you whether I think your brand is legally strong or not. I can’t tell you if it’s going to resonate with consumers,” he says.

“The right questions to ask your attorney are: What do I really need to do now? What mistakes would I be making if I didn’t do this now? Especially in IP, there are things that you can’t wait for.”

For example: There are time bars for when you need to apply for a patent, and if you wait too long, you’ll never be able to successfully apply.

Find Legal Help

When it comes to branding, it’s always best to talk to a reputable and experienced attorney early. There are cost-effective ways to preserve your rights, and talking through strategies with an attorney is more beneficial when done sooner rather than later.