Trademark best practice says to be vigilant and defend your marks whenever there could be the potential for “market confusion.” Failure to do so, over time, weakens your rights to the name. Conversely, when preparing to launch your own new beer or brewery, trademark searches must extend into every direction that makes sense. The recent DC Brau/Denizens Brewing Co. trademark story illustrates this point.
Maryland-based Denizens, planning to launch in May 2014, was to be known as Citizens Brewing Co. According to a blog post on the Washington Post, the group submitted a trademark application in March under the classification for “Brewpub services; Serving food and drinks; Taproom services featuring beer brewed on premises.”
“There isn’t a brewery named Citizens. We pursued this in good faith,” Denizens co-founder Emily Bruno said. “We’ve obviously invested thousands of dollars. We did not believe there would be any market confusion.”
Things hit a snag in December. The issue was Washington, D.C., brewery DC Brau has a beer called “The Citizen.” The actual confusion consumers might have discerning between a brewery named Citizens Brewing Co. and another brewery’s lone beer called The Citizen is debatable, but trademark law essentially prompts breweries to act and end the debate in some way.
DC Brau released the following statement on the matter: “We have worked very hard over the past three years to build DC Brau in the Mid-Atlantic region, with a significant investment in developing and marketing our flagship brews, including The Citizen for which we hold a trademark on the name when used in relation to beer. When we heard about the Citizens Brewing Co. opening, we approached them about our concern about potential brand confusion within the market. We had hoped to address the situation without having to resort to any kind of legal action, but unfortunately that wasn’t possible.”
For breweries in Denizens’ position, trademark law essentially requires a retreat/compromise. Sure, a fight could be had and a fight could be won in a court room, to more definitively end the debate, but that is time and money, two things in short supply for a brewery in planning. Back to the story at hand, from the Washington Post:
Though both parties expressed hope of resolving the issue over the phone, they weren’t able to reach a resolution, and DC Brau’s legal team sent Denizens a cease-and-desist letter on Dec. 6. DC Brau’s attorney did not respond to a request for comment.
There are no judges or courts involved. [Denizens co-founder Emily Bruno] said Denizens would rather spend its money on brewing equipment than legal fees, so the cease-and-desist was enough to induce the change. A search through the trademark database reveals that there’s a Denizens registered to a liquor company, but Bruno doesn’t think that will give them any problems, because it is different enough from their product.
We hope they are correct on that last point, but as was noted in our feature on trademark law earlier in the year:
Searches need to expand beyond the beer category these days as well. [Mark Traphagen of Traphagen Law PLLC in Washington, D.C.] said he’s seen a fair amount of disputes come from outside the beer category — from soft drinks and energy drinks and flavored teas. This wasn’t always the case, and it’s not so much that the law has changed, but just more and more companies are challenging and more courts are agreeing.
“It is more willingness by owners to assert rights across categories and more willingness from courts to see that overlap,” Traphagen said.