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Trademarking

Registering your mark with the United States Patent and Trademark Office creates a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods listed in the registration.

Many producers spend a lot of time creating a marketable image for their products through innovative images, label designs and catch phrases. As a producer you hope to stand out based on the sensation of taste. However, to get the consumer to the point of enjoying what you have created, it is likely that you will need to convey your craft through images, designs and marketing tools that create a brand which represents your hard work – namely the wine, beer or distilled spirit that is the ultimate product you sell.

Since your brand image will represent the beverage you create, and ultimately your business, it is important to make sure that it is protected. In some ways protecting your actual product is a bit easier than protecting your brand because you have the ability to set up procedures that are only known internally for production of your beverage. Your graphic design, logo, or tagline is intentionally placed into public view. As a matter of fact, you want it in front of as many people as possible! Registering your mark with the United States Patent and Trademark Office creates a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods listed in the registration.

As you become more successful, there is a higher likelihood that an individual or business will seek to “borrow” some of your hard work to create their own success. However, what you have created as your brand image is actually an intellectual property right that is protected under the law of the U.S. and many foreign countries. When someone else uses this property without proper permission, which usually comes in the form of a license, they are basically stealing from you and subjecting themselves to liability.

Brand Protection by Trademarking

In order to protect your brand, you need to properly register your trademark. So, what is a trademark? The U.S. government describes a trademark as a word, phrase, symbol, design or a combination of these that identifies and distinguishes the sources of goods of one party from those of others.

Registration of a Trademark

Many may be surprised to learn that a trademark interest is not created when you register with the federal government. The trademark is established by using the mark in commerce. The longer that you use it, the stronger your claim to it becomes. However, if you are looking to establish the highest level of protection, then your goal should be to register the mark with the United States Patent and Trademark Office (USPTO). This registration will do the following:

  • Create a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration
  • Put the public on notice of your claim of ownership of the mark
  • Place a listing in the USPTO’s online databases
  • Provide you the right to use the federal registration symbol ®
  • Provide the ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods
  • Create the ability to bring an action concerning the mark in federal court
  • Create the use of the U.S. registration as a basis to obtain registration in foreign countries

You will want to begin the process of registering your mark as soon as you know what your mark is and how you want to use it. It is not necessary for you to be using the mark in commerce at the time you begin the registration process. As long as you know that you will be using the mark in commerce in the next few years, you will be able to take priority over any other person or entity that files after you, even if your basis for the mark is an intent, rather than actual use in commerce.

Understanding Trademark Symbols

You may use this symbol, which stands for “trademark,” if you claim rights to use a mark, to alert the public to your right to claim the mark. You may use this designation regardless of whether or not you have a pending application with the United States Patent and Trademark Office.

This symbol may be used on your good after the United States Patent and Trademark Office registers your trademark. It may not be used while your application is pending, but rather you should use the ™ designation during that time. The holder of the trademark must be careful to only use the designation on goods that are actually registered with the federal government. However, there is no requirement regarding the placement of the designation. In other words, it can be used anywhere near the registered mark in a superscript or subscript manner.

It is also important to work through your brand protection issues early because you may be infringing on the intellectual property rights of another business. Proper registration of a trademark with the USPTO should start with a trademark search to determine if there are any immediate conflicts with your preferred mark. The USPTO will only register unique marks. The examining attorneys at the trademark office will not allow for registration unless your mark is unique. Therefore, it is important to perform a search before submitting your request in case there is an immediate, identifiable conflict. If in fact there is a conflict, it may still be possible to utilize the mark. One of two things could happen. Either you perceive a conflict and proceed to register your mark in the hopes it will be deemed unique and registered. Or, you approach the owner of the mark with a proposition to either purchase the mark from them if they no longer wish to use it, or you could purchase a license from them to use the mark in some manner while paying them a fee to do so. Should you be able to purchase the mark from them, then you will want to properly record your “Assignment” of trademark with the USPTO. There is a process for this and it will allow you to become the proper owner of the mark.

What Should You Trademark?

When you apply for your mark, it will be necessary for you to determine what good you are trademarking, as each good represents a separate mark. The USPTO will allow you to register one type of good, based on a description from the International Schedule of Classes of Goods and Services, for one fee. However, the specific item of goods must be listed. So, for example, you may want your logo to be a registered mark and use it on both your beverage container and also on an item of clothing – these would technically be two separate marks that carry two registration fees. However, there is the possibility of listing multiple items of goods to be covered in any one class that will have a single fee. So, if you intend to sell merchandise in your tasting room with your logo and that merchandise falls within the same class — such as shirts and ball caps do for clothing, then you will simply have one trademark to register. It will be necessary to carefully describe the goods in which you intend to place your mark.

Policing Your Mark

Trademark registration provides you with a lot of brand protection. In order to maximize that protection, you need to monitor and police your mark. The federal government will not do this for you. If someone uses your mark, or a mark similar to it, that use could weaken or dilute the strength of your mark and affect your ability to protect it in a later enforcement action against another party. It should be refreshing to know that your business has the opportunity to grow and develop a recognizable brand image that can be protected in the marketplace. It would be our pleasure to answer any questions you may have about trademarks, or assist you with proper protection of your brand.

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Dear friends in the alcoholic beverage industry,

As we as an industry, nation and planet collectively try to navigate this unprecedented period the coronavirus has brought us, We’d like you to know that we at Craft Beverage Consultants (the other CBC!) are here to answer any question you may have (or not know you have) about not just surviving this time but positioning yourself to thrive as soon as social distancing measures allow your business to function at full capacity again.

If you schedule a free 60-minute phone or video conferencing consultation with me or any of my 11 highly specialized colleagues, we’ll help you figure out any of your immediate and/or longterm business needs, or “everything but the staffing,” as we like to say. We’re not high-pressure sales kind of people, especially these days, so you don’t have to worry about fending off annoying pitches. Make an appointment on our website or Facebook page, or just call us the old-fashioned way at 314-768-0220.

Our experts have a combined 150 years in the alcoholic beverage industry, with deep knowledge in everything from sales and distribution, production, and regulatory compliance to marketing, package design, event planning, IT, (social) media, hospitality, and even values-based executive coaching. 

For example, we can coach you through this season when chain accounts have canceled their spring, in some cases, fall resets and distributors have drastically cut orders. Our director of business strategy and compliance can save you money – now – on excise taxes, caution you to avoid naming your beers in ways that risk alienating your buyers (Wuhan Wheat? Coronavirus Cream Ale? Groan. No.), and secure TTB approval for the tastefully named beers you do make. Our creative director and web team can get your e-commerce site up and running and launch a social media campaign that keeps you top of mind for current and future customers. Our director of storytelling can put you in front of the press so you can tell your story to your community. 

Once you’re ready, we can look forward together. Now is the time to talk about post-virus. We all suspect the legal landscape to look different. But how? And how do you prepare yourself in a way that positions you to charge out of the gate ready to maximize the potential and profit of whatever the “new normal” turns out to be? Please get in touch so we can talk about it. 

CBC’s roster includes local and regional clients like Epic Brewing, Logboat Brewing, Piney River Brewing, SudWerk Brewing, Waves Cider and Common Cider Company, just to name a few.  The agency was founded in 2004 by Jacob and Beth Halls, formerly known as Convergence Consulting; Rick Laxague, joined as a partner in charge of sales, marketing and distribution consulting in 2019. 

Rick hase close to 20 years of experience, a bulk of which was with Crescent Crown Distributing in Arizona. His last role there was Area Sales Manager for the dedicated craft beer division, coaching and leading a sales team to be nationally recognized. In early 2014 Rick helped take a regional brewery national as their Director of National Accounts and increase that segment of their business from 30,000 cases to almost 300,000 cases in two years, an increase that equates to $4.8 million in IRI dollar sales. 

Co-founder Jacob Halls brings 17 years of experience in regulatory compliance, business strategy, marketing and craft brand management to the company. In his former position as craft brand manager for the N.H. Scheppers Distributing Company in Columbia, Missouri, Jacob helped lead his team to winning the 2016 Distributor of the Year award from New Belgium and to a nomination for the Brewers Association’s Distributor of the Year award. Jacob is also the founder and director of the South East Craft Beer Fest and several other industry specific charitable event marketing festivities. Beth Halls is Director of Business Operations and Coordinator of Charity Operations for the festivals and events run by CBC, such as the South East Craft Beer Fest, MO Bacon & Bourbon, and many more. 

Again, please reach out to us for anything.  CBC can be reached at (314) 768-0220 or at craftbeverageconsultants.com.

We look forward to meeting/talking soon.

Sincerely,

Rick Laxague, Jacob Halls, and Beth Halls