More Tales from the Land of Trademarks!
Nov. 20, 2015
We saw an article yesterday in the Minneapolis/St. Paul Business Journal, Lawyer-Owned Winery Gets Brewery Startup to Change Name. The title actually sums it up pretty well – a lawyer-owned Oregon-based winery, Bryn Mawr Vineyards, sent a cease and desist letter to startup Minneapolis-based brewery, Bryn Mawr Brewing for infringing on its trademark. The winery had registered the Bryn Mawr Vineyards trademark on December 21, 2010, several years before Bryn Mawr Brewing filed its trademark application. For more on the legal issues involved, keep reading.
The winery was apparently unwilling to reach a compromise, forcing Bryn Mawr Brewing, which has already developed a high degree of name recognition in the area, to change its name to Utepils Brewing.
This dispute raises several important issues.
- Was Bryn Mawr Brewing aware of the trademark registered for Bryn Mawr Vineyards?
- Is there a distinction for trademark purposes between beer and wine? Should there be?
- How can a geographic name for a neighborhood be registrable as a trademark?
With respect to the first question, we don’t know whether Bryn Mawr Brewing was aware of the BRYN MAWR VINEYARDS trademark when it applied for its own trademark for BRYN MAWR BREWING. As we have mentioned in previous posts, however, a thorough (and early) search of the PTO database for any mark similar to the mark you intend to use for a brewery or product is one of the most important things a startup business can do. Rebranding can be a costly and frustrating experience for a new brewery, and we have had clients who have had to go through this, as well.
The second question has been discussed on this blog before, but since our last post on this issue, a new Trademark Trial and Appeals Board decision has come out that, at the very least, suggests the beginning of a shift in the PTO’s thinking on the distinction between wines and beers. Actually, it was a friend of Hop Law who obtained this decision for a brewery client and we were thrilled for him (if not a bit jealous). That decision states: “Nevertheless, some of the sets of registrations [for beer and wine] are of relatively recent vintage, and this evidence is illustrative of the fact that the Office has in the recent past taken inconsistent positions when it comes to likelihood of confusion between marks for beer and wine, which is the issue in the present appeal. . . . We conclude that, despite the evidentiary record showing some degree of relationship between the alcoholic beverages beer and wine, the cumulative and specific differences between the marks and the goods sold thereunder are sufficient that confusion, while possible, is not likely to occur among purchasers.” While the TTAB specifically stated that beer and wine were so related that the similarity of the goods weighed in favor of a finding of a likelihood of confusion, there was language in this decision showing at least some reluctance to make this a bright line rule. Therefore, there is a possibility that the same or similar beer and wine marks can register. We believe that there is often a case to be made for distinguishing between beer and wine in the trademark arena.
The third question about geographic descriptions in trademarks is a legal issue that often seems to go unaddressed. Generally, a geographic term that describes the location of the product may not be registered on the Principal Register (absent a showing of secondary meaning). For example, FIRE ISLAND BEER CO. was refused registration on the grounds that it was geographically descriptive. To the same extent, one could argue that BRYN MAWR VINEYARDS is geographically descriptive – the fact that Bryn Mawr neighborhoods in Oregon and Minneapolis, however, are not generally known to the public, may be sufficient for them to avoid refusal for geographic distinctiveness. Nonetheless, it is important to consider the implications of choosing a geographically descriptive name.
We are sad to see that after months of branding efforts, Bryn Mawr Brewing had to change its name. On the other hand, we are looking forward to the opening and new branding for Utepils Brewing and cannot wait to try their beer-perhaps, as their new name suggests, we’ll even get to have one outside on a sunny day!