Avoiding Trademark Disputes in the Alcoholic Beverage Industry
In the first installment of our series on trademark disputes in the alcoholic beverage industry, we identified the risks facing industry participants on the branding front, regardless if they are “entrepreneurs” entering the market for the first time or established companies launching a new brand. As we advised, the risks are significant and have the potential to completely derail your new brand.
In our first post, we focused on the first step of brand selection: avoid selecting a brand too similar to that of another player in your market. However, as also discussed, threats can originate beyond what you may consider to be your “relevant market” segment. Further, even if you avoid an immediate challenge to your brand, the marks of other parties could limit your ability to expand the scope of your brand on a go forward basis.
So, again, how do you mitigate these branding risks as a proactive executive? As with every other significant business decision you make in running your business, do your homework. At a bare minimum, know who the other players are in your market and what their brands are. In considering whether there might be conflict in the future, recognize that (a) there is a significant subjective aspect to the key legal question in these disputes concerning whether there is a “likelihood of confusion” among consumers, (b) an adverse finding in these disputes does not require that your brand – or your product – be identical to the asserting party’s brand and product, and (c) at least initially, it will be the perspective of that competitor or other company asserting a claim – rather than your own – that can be the most relevant. After all, as soon as they raise the issue, you must start spending time and money to address the allegation.
The old adage of knowledge being power is without doubt applicable here. Moving beyond your own direct knowledge of the market and brands in play is essential to conducting an appropriate level of due diligence. There are resources readily available to conduct a de minimus level of brand research. Even the simple act of running a basic internet search on your proposed brand to see who and/or what comes up can begin to inform your branding process. If you find a hit that appears to refer to a product or service being actively sold or promoted by a company, visit the company website and learn what you can about them, the product, and the scope of their business. Going a step further, the U.S. Patent and Trademark Office (“USPTO”) maintains a publicly accessible online database of federally registered marks and pending applications for registrations on file with the USPTO on its website. There are also professional trademark search services, although these services produce large and complex reports and do not offer any type of actual evaluation of the search results.
While these are solid starting points, it is important to recognize that these searches simply can’t provide a comprehensive picture of the relevant landscape for your brand or give you effective guidance in navigating these issues. General internet searches are not geared toward trademark searching and produce inconsistent and incomplete results. While more helpful, the USPTO database is not oriented toward novice users, and it can be difficult to identify all of the potentially relevant marks with typical search queries. In addition, the USPTO database does not cover the immense universe of unregistered, common law marks at all. Most importantly, none of these sources provides the necessary knowledge to evaluate whether your brand presents a risk of likelihood of confusion with any particular senior brand.
The best strategy is to retain experienced trademark counsel to help you evaluate your proposed brand and clear it from likely future issues before final selection and launch. An experienced attorney will review your brand for the possibility of descriptiveness and other threshold issues that may interfere with your ability to protect the brand in the future, as well as evaluate its potential for growth into new areas. And, of course, they will also conduct an in-depth search, using a variety of resources, to cast a broad net and identify and evaluate both registered and common law brands, company names, domain names, web site content, product names and other areas for potential conflict with your proposed brand. Following that, your attorney will assist you with considering the benefits of federal registration for your brand and guide you through the registration process, both domestically and internationally, which is increasingly relevant today.
Remember, investing up front in proper evaluation and clearance of your new brand with the guidance of experienced trademark counsel can help minimize the much greater expense – and potentially catastrophic risk – associated with trademark disputes down the road.