You probably don’t think about it much when enjoying the hops in your favorite IPA or the roasted malts of a robust stout, but there’s a lot of intellectual property* in beer. It’s the curse nature of my day job that often leads me to such thoughts even when I should be blissfully kicking back with beer in hand. Recipes contain it. An innovative brewing setup contains it. The brands definitely contain it. Brewery names, beer names, beer logos and label art are perhaps the most important of all, and certainly the most fiercely protected.
These issues crossed my mind recently when coming across two stories about trademarks and beer. One noted that AB-InBev recently filed applications with the U.S. Patent and Trademark Office (USPTO) to trademark 42 airport codes as beer names (well, beer as a class of goods). Think beers named ATL, SEA, JFK and IAD coming to an airport near you. AB-InBev also filed applications for 14 area codes last year and are working their way through the registration process.
The other story is a bit of a dust-up between Grey Sail Brewing Co. in Westerly, R.I. and Full Sail Brewing Co. in Hood River, OR. It seems Full Sail called up Grey Sail in April to discuss possible violations of Full Sail’s trademark rights. Grey Sail’s owners claim they got the impression they would be sued if they didn’t change their name. Rather than waiting around to be sued, Grey Sail took the offensive, suing Full Sail in U.S. District Court in Rhode Island.
Jon Abernathy at The Brew Site has an excellent summary of the issue along with comments from Full Sail. He’s also worked up some comparison pictures between the logos to let you make your own judgment regarding possible infringement.
The world of craft beer is romanticized so much by us beer lovers that we’re often shocked to read about a brewery suing another for trademark infringement. When a story like this hits the news wires, the issue is almost universally characterized as one of the “big boys” picking on the little guys who are just trying to make a go of it in the beer world. Similarly, it is almost universally pointed out that the owner of a trademark has an obligation under federal trademark regulations to actively defend their trademark by seeking out and addressing potential infringements.
That’s true. The quirk in this case is that Full Sail – the supposed “big boy” in this matter, and the only one of the two to have a federally registered trademark – didn’t sue. Grey Sail did. Why might they do that? Venue, positioning and timing. She who sues first gets to pick the venue for filing the lawsuit, assuming there are multiple proper places to file the suit. Plaintiffs are often initially granted some benefit of the doubt in the court of public opinion as well as a jury. By filing, Grey Sail also forces the issue, gaining some control of the timing of the litigation.
Grey Sail filed the lawsuit in U.S. District Court in Providence, RI, less than an hour drive from the brewery and an area where they are “getting a lot of support” and have “been very well received” according to Jennifer Brinton, owner of Grey Sail. It’s a smart move if Grey Sail truly felt like Full Sail would ultimately file a lawsuit.
Grey Sail started production in November 2011 while Full Sail dates back to 1987. It’s anyone guess whether Grey Sail checked the registered trademarks database, did a google search, or otherwise considered the uniqueness of their name and logo before launching production. Full Sail has two registered trademarks, one for their original logo design which incorporates the words “Full Sail Ales” and their long used sail graphic and the other for the “Full Sail Brewing Company” name. Grey Sail has no registered trademarks, but did file applications with the USPTO in May, 2012, after receiving the call from Full Sail. Full Sail had already filed applications for additional trademarks in October, 2011. All of those applications are still pending.
Registration with the USPTO is not necessary to have legal rights/protections for a trademark, but it does provide significant benefits, not the least of which is having public notice of your claim to the trademark and a legal presumption of ownership and the exclusive right to use it.
During the application/registration process, the USPTO considers whether the requested trademark is merely descriptive or whether it is likely to cause confusion with another trademark. If either case is true, registration is rejected. Take a look again at the logos in Jon’s post and ask whether there is a likelihood of confusion.
It’s not only an important issue for breweries and their beers. I’ve had my content cut and pasted, without attribution, into press releases and other news articles (a violation of copyright). I’ve had my pictures used in advertising, again without attribution (another copyright violation). When I got word that someone was thinking of creating a beer site called “Growler Fills” – well after I had already started this one – I filed an application to register “Growler Fills” as my trademark for an online publication pertaining to beer.**
The USPTO initially rejected my application on the basis that the name was merely descriptive – that is, they alleged the name merely describes exactly what the site does, providing a directory of places that fill growlers.
If you’ve been reading Growler Fills for a while, you know this is not the case. After demonstrating a mere 3% of my entries at that time even mentioned the word “growler,” the USPTO reversed course and published my application for opposition. When no opposition was received, the USPTO approved my application and registered my trademark.
Why did I do it? This stuff takes time and effort. Lots of it. Money, too. Building a brand and the credibility and value that go with it is a long process.
I’ve enjoyed Full Sail’s brews for years and regularly seek out some of their seasonals. Their logo and branding is readily identifiable. Did Grey Sail set out to co-opt some of the goodwill, value, and brand power that Full Sail has built up from 1987? I doubt it.
Still, Full Sail distributes to 29 states, including Rhode Island. Given the time, effort and cost of building their brand, there is little question Full Sail had to make that call.
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* Intellectual property for this purpose is the creation of something that enjoys legal protections such as trademarks, service marks, copyright, trade secrets, patents, etc.
** No I don’t own a trademark for a “growler fill” as the act of filling a growler with beer at your favorite brewery. This post is already long enough, so an explanation of the distinction is a story for another day.
