Beer aficionados worldwide can easily describe the nuances of pilsners, IPAs, milkstouts, and lagers. More hazy is the fact that beer is a product that touches upon nearly every type of intellectual property. Indeed, the names of breweries and beers are subject to trademark; label art and packaging are works of authorship covered by copyright law; and hops—that critical component of a beer’s aroma and flavor—can be patented.
If you are in the businesses of brewing, appreciating the differences between each type of IP can empower you to assert your related rights and respect those of others beer makers. Likewise, an awareness of how important it is to safeguard your precious brand assets may move you to federally register or otherwise protect your IP, if you have not done so already.
Toward these ends, this article uses hops as an example to delineate the distinctions between patents and trademarks, which are oftentimes misunderstood.
Patents reward innovation
Given that the fundamentals of brewing have been in the public domain for centuries, patents do not get much attention in the industry. Truth be told, there is nothing new about steeping barley and other grains to extract specific sugars into a wort so that yeast can do its thing and create alcohol with hops serving as an aromatic, bittering and preservative element. Fact is, Trappist monks and Germans dialed all this in many hundreds of years ago, which begs the question: how can patents apply to—of all things—hops?
The short answer to this seemingly straightforward query is the plant patent. By statute in the United States, whoever:
” invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, . . . may obtain a patent therefor. . . .”
Hops can be among these new plant varietals, and as part of the bargain for inventing a novel strain, brewing innovators release their work into the public domain after 20 years. But until that two-decade window closes, the creator and owner of a plant patent gets to cash in exclusively on the agricultural brainchild.
So, gripe as we may about the cost of Citra or Mosaic hops, the very fact that these varieties are popular is a testament to the ingenuity of those that bred them—ingenuity that can be compensated handsomely. Bottom line: patents reward innovation, a guarantee memorialized in the Patent and Copyright Clause of the Constitution.
As stated, the very nature of a plant patent is premised on the specimen (in this instance, a subspecies of hops) entering the public domain after the patent’s term expires. To get there, the patent itself must describe how to create the plant in question, which is called the enablement requirement.
Of note, if a patent owner does not adequately teach the world (translation: the public domain) about the plant at issue and how to make it upon the patent’s expiration, the patent’s owner—by effectively keeping the invention secret and taking advantage of the 20-year monopoly bestowed by patent law—has not kept up its side of the bargain. This unfortunately seems to be the case with respect to the Citra hops patent, which does not offer much in the way of substantive direction for replication of this varietal, meaning it may not be enabled and, therefore, subject to challenge.
Trademarks prevent consumer confusion
For their part, trademarks serve an altogether different purpose than patents. First and foremost, a trademark does not reward innovation, as does a patent. Instead, the guiding principle of trademark law is to protect consumers by using trademarks as source identifiers.
As such, trademarks survive beyond a “limited” time period (there is no 20-year maximum) because the regulation of commerce is ongoing and the continuing viability of a mark may only be jeopardized by an owner’s failure to abide by the clerical requirements of the U.S. Patent and Trademark Office and to pay compulsory renewal fees.
To be clear, marketplace confusion is what trademarks are meant to prevent. That being said, if a shopper strolls down a grocery aisle, peruses the beer selection, and confuses a bottle of Stone IPA with and a Keystone Light by virtue of packaging—and advertisement—encouraging drinkers to “grab a Stone,” Molson Coors Beverage Company (owner of the Keystone brand) may be infringing upon Stone IPA’s trademark. If this scenario sounds familiar, that is because this very dispute between Stone Brewing and Molson Coors is scheduled for an October trial in federal court.
Whatever the outcome of that case may be, Congress has authorized the registration of trademarks so that they may be source indicators allowing customers to know where and from whom a given product has come. And brewers must recognize that obtaining federal registration of a trademark provides several advantages; most notably:
- the ability to block confusingly similar marks on related goods and services, thus protecting a company’s commercial interests;
- enhanced damages in the event of successful trademark litigation; and
- presumptive knowledge of the trademark throughout the entire U.S.
Can brewers use the trademarked names of yypes of hops?
Assuming you are not already scratching your head trying to fully grasp the basics of patents and trademarks, here is where things get a bit complicated.
Brewers can lawfully refer to the hops they use as ingredients—even if those hops are patented and their names trademarked by other parties—so long as in doing so they do not create any confusion as to source. Understand that the owner of a plant patent has the exclusive right to grow and sell that plant—for example, the hops referred to here. But once those hops are put into a beer, what the brewer says about them is a matter of trademark law, and the beer maker is at liberty to identify a type of hops as an ingredient, even if that hops strain is protected by trademark and patent.
The upshot: exclusivity as granted by a patent is not found in trademark law, and a mark is intended only to indicate a product’s origin. Further, the brewer purchasing hops is the relevant purchaser of those hops, not the beer drinker. Thus, because the brand of hops cooked into any given glass of suds is not consumer facing, a brewery has carte blanche to list it as an ingredient without the specter of trademark infringement.
Think of it this way: a company selling personal computers can tout that it uses Intel processors, and a shoe brand can advertise that its products are made with Vibram soles. (Note that in both these examples, Intel and Vibram have already sold their products—just not to the end consumer.) In the same vein, any given brewer can claim it uses CITRA hops, and there is no resulting confusion—or actionable infringement—because the ingredient is understood to be a part of the whole product.
The importance of educating beer drinkers on the generic names for hops
When photocopiers first became go-to technology, the Xerox Corporation was so successful that its ubiquitous machines led many to refer to individual photocopies as a “Xerox.” Consequently, the trademark for Xerox was at risk of becoming generic, which in turn could have led to its cancellation. In response, and in an effort to retain the legal protections its trademark provided, Xerox launched an advertising campaign to push the use of the term “copy” to refer to what their machines generated.
The lesson learned by Xerox was to take steps to avoid being a victim of its own success by allowing its trademark to become a generic name (read: the common name of a class of products). This is a message that should resonate with any renowned brand—those in the brewing space included—as Kleenex, Coke, and Levi’s can all attest to.
Might hops growers run into Xerox-like problems should there patented strains become eponymous with, say, a particular style of hops? It is too early to tell given that the issuance of plant patents on hops is a fairly new phenomenon, and breeders have yet to deal with the sale of generic versions of their products upon patent expiration.
Still, those in the know refer to Citra, Mosaic, and Galaxy hops by name. And while there have been no trademark issues to date—likely because the patents on these hops have kept the source to a single producer—once those patents expire, other growers will presumably plant similar types of hops that may well allude generically to the predecessor product, such as XYZ brand Citra Hops.
If that were to happen and the owner of the Citra trademark elects to sue for trademark infringement, the case would hinge on whether the Citra mark is generic in the minds of purchasing consumers. Which is why it would behoove hop growers owning trademarks to educate the public about the generic (as opposed to brand) names for their products. Pharmaceutical companies have been doing this for years, which is why most every drug is advertised with two names: one in big letters (the trademarked brand name) and the other (the generic) in parentheses.
No doubt, after contemplating the ins and outs of patents and trademarks, you might need to pour yourself a cold one. But knowing the important differences between them—and having the right legal counsel to advise you—can go a long way toward ensuring that your IP portfolio is not only protected, but also successfully managed.
Taylor C. Foss is an intellectual property litigator, craft brew enthusiasts and Of Counsel at Michelman & Robinson, LLP, a national law firm with offices in Los Angeles, Orange County (California), San Francisco, Chicago, and New York City.