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Davis Brown Intellectual Property Law Blog 

The Woes of Failing to Conduct a Trademark Search - April 10, 2015

It’s happened again. Peddler Brewing Company has been forced to change the name of one of its popular beers from “TANGERINE WHEAT” to “TANGERINE HEFEWEIZEN” after receiving a cease and desist letter from Lost Coast Brewing Company (Lost Coast). Apparently, Lost Coast has a federal registration for the name “TANGERINE WHEAT.” Lost Coast has been using the name “TANGERINE WHEAT” since as early as 2008, but only recently filed for federal protection on May 28, 2013, and achieved registration status on April 8, 2014. 


The issue of infringement is pretty clear: the marks are identical and used on identical goods. This is a classic case of infringement, and because Lost Coast has a federal registration, it has the legal right to exclude any third-party who began using after Lost Coast to cease and desist further use of the mark.


However, there are a couple of interesting issues that are worthy of a discussion.


First, Dave Keller, co-owner of Peddler Brewing Company noted in an online article that he did not think a mark that describes a type of beer could possibly act as a trademark. In most circumstances, Mr. Keller would be correct. Names that merely describe a product cannot act as trademark. The only exception to this rule is when a trademark gains what is known in trademark law as “secondary meaning” or “acquired distinctiveness.” This means a descriptive name has been used exclusively by one person for an extended period of time and only now functions as a source identifier for a product.


In this case, Lost Coast had been using the trademark TANGERINE WHEAT for at least five years at the time of filing the federal application and presented sufficient evidence it acquired secondary meaning in the marketplace among consumers. As such, Lost Coast was entitled to secure a federal registration for its TANGERINE WHEAT mark.


Second, I think the attitude of Mr. Keller demonstrates a fundamental misunderstanding by many individuals as to the duties of a trademark owner. This is, by no means, a slam to Mr. Keller, or any other business owner or individual who shares the same view of Mr. Keller, which I perceive to be, “why would these brewers come after me for my small usage of a similar name?”


There are several justifications for Lost Coast’s actions, despite the clear camaraderie amongst brewers in the craft brewing industry. As a trademark owner, you have an affirmative duty to police and enforce your mark. This means that upon finding out someone is arguably infringing on your trademark rights, you should do what you can to stop this use. Failure to do so can result in losing rights to your trademark.


Additionally, the more third-party uses of your trademark, the narrower your trademark rights are. As unpopular as these types of things are, any trademark owner should do exactly as Lost Coast in this situation.


The big lesson here:

No matter how small a brewery you are, no matter how limited your distribution is, and even if you don’t distribute at all, a trademark clearance search is absolutely necessary before you adopt a trademark for your beer or your brewery. Social media and websites such as Untappd, Pintley, Ratebeer, etc. are easy ways for you to make sure your new beer or brewery name is not already taken. For a brewery who does not distribute or who does limited distribution, changing a beer name may not be the end of the world financially, or for your reputation.


However, for breweries that mass distribute, have labeling laws to deal with and who spend thousands and thousands of dollars on a marketing campaign, a cease and desist letter can be a scary proposition.

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