There are various strategic decisions that go into protecting trademark rights. When will use of the trademark begin? How long has the trademark been in the marketplace? What goods and services will be used in connection with the trademark? Has a trademark clearance search been done?
The best way to ensure your trademarks are protected is to apply for a federal trademark registration after a clearance search but before the trademark is launched into the marketplace. However, for the craft brewery, there are other considerations to think about before applying for a trademark registration, especially when the trademark will cover a beer label.
The issues surrounding approval for beer labels have been in the news recently. As many of you probably know, Flying Dog won a major battle for the craft beer industry in having a court find that beer labels are subject to constitutional protection via freedom of speech principles. In short, the Flying Dog lawsuit will put federal and state label approval agencies on notice that breweries have the ability to express themselves—within certain limits—through their beer labels.
What does this have to do with securing trademark rights for beer labels? Well, in this instance, the craft brewer has two distinct steps to take before launching some of their products in the marketplace: a trademark clearance search and, in some instances, label approval. So which comes first? At first blush, this seems to be a sort of chicken and egg scenario. However, the very first step should always be conducting a trademark clearance search. Once a trademark has been cleared for use in the marketplace in connection with certain goods, only then should the craft brewery begin making plans for adoption and distribution in the marketplace.
So the question then becomes do you apply for a federal trademark before or after your label is approved? At the end of the day, waiting to apply for the registration until after label approval may cause problems down the line. Depending on how long it takes for your label to be approved and for your product to launch it is conceivable that another person could begin using something similar or identical to your label. Because trademark rights are based on who applied for or started using the mark first, you may have lost rights to a trademark you’ve spent time and effort getting approved by either state or federal agencies to put on your labels.
Strategically, the best way to preserve your rights down the line is to secure trademark rights over marks that will be on your labels prior to securing approval of labels from state and federal agencies. Having to change your trademark is an expensive proposition, and having to apply for new label approval can add to costs and time to this process.
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