Applications to Register a Trademark Can Give Away Your Position
BLACK OPS is a great name for beer. It suggests (and doesn’t merely describe) the beer as dark, secret and elite. It’s as though only you and a select few know about this beer.
The thing about excellent trademarks is that great minds often think alike, and more than one person is likely to independently hit upon the same clever trademark. But, usually, there can only be one—the one used in commerce first. This is known as priority.
There Can Only Be One! (But Where?)
In the old days, it was not unusual for similar trademarks for similar goods to co-exist, provided they were far enough away from each other. But increasing mobility, the development of national markets and distribution systems, the internet and, most of all, federal trademark registration22Which has only been around (Edit: in its current form) since 1947. have changed that. Nowadays, it’s actually pretty uncommon for a product’s market to be geographically limited. You can sell nearly any moveable product nationwide, and even services are increasingly available to remote customers.
The way it used to work is like this: Say Xena started selling NOS HABEBIT hummus23“Nos habebit humus” is the final line of the first stanza of the Medieval student drinking song known as the Gaudie. It translates as, “The earth will have us,” i.e., we’re all going to die, so we may as well have fun in the meantime. in Florida in 2000, and Yanni independently started selling NOS HABEBIT hummus in Oregon in 2001. Xena and Yanni would just have to live with each other. Neither could invade the other’s market.24Of course, in the really old days—of myth and magic—Xena would just send Gabrielle to kick Yanni’s ass and break his pan-pipes or whatever. Wait, that’s Zamfir I’m thinking about.
But federal trademark registrations changed all that. You noticed that I said Yanni “independently” used the mark, by which I meant, “without notice of Xena’s use.” Registration creates the legally-enforceable fiction that everyone selling products in the U.S. is on notice about the registered trademark. That means the first user of a registered mark can force others to stop using the mark.25Sometimes we trademark lawyers will say that registration gives you nationwide protection, as though Xena could immediately force Yanni to stop using NOS HABEBIT. That’s not quite true. Xena can’t force Yanni to stop until Xena is ready to enter into Yanni’s market. Once he learns about Xena’s prior registered trademark, Yanni has a tough decision about whether to carry on and hope that Xena doesn’t invade his market, or re-brand while the getting’s good.
Are We Clear? Good!
If you’re serious about your trademark, then, it pays to “clear” the trademark, i.e., make sure that you really are the first person in the U.S. to use the mark (or similar mark) for the products you want to sell (or similar products).26In some ways, we’re getting ahead of ourselves. There’s an even more fundamental question you should ask: is the proposed trademark even an actual trademark? But that sounds like the subject of a future blog post. You can hire professional firms to perform extensive trademark searches, but those can cost several hundred dollars per trademark. Not everyone has that kind of money at their disposal, and not every trademark is worth the effort. At a minimum, though, you should perform at least a rudimentary search using the database of the U.S. Patent and Trademark Office. It’s free to use. It’s not as extensive as a professional service, but it catches a lot of problems—if you do it correctly.
You can’t just plug your proposed trademark into the search box and hit return. What the search engine returns will be both under-inclusive and over-inclusive. Trademark law seeks to prevent confusion, and marks don’t have to be identical to be confusing. Also, trademarks can be confusing if they sound the same (after all, we say and hear trademarks almost as much as we read them). In addition, a trademark’s effectiveness is limited to the products (“goods and services” or “G&S” in USPTO’s parlance) in connection with which the trademark is used. As with the trademark itself, though, the products don’t have to the identical.
Thus, you’re going to need to think about similar spellings, mis-spellings, joke spellings, puns, double entendres and even, sometimes, foreign equivalents. Then you’ll want to plow through the “goods and services.” If you’re lucky, nothing will be close. If you’re less lucky, something will immediately torpedo your proposed mark. If you’re really unlucky, it’ll be a close call, in which case, you should probably call a trademark attorney (sorry!).
What’s the Worst That Can Happen?
Maybe you’re thinking: Why bother? Why not apply to register for the mark, and see what happens? The worst that could happen is that the USPTO finds a similar registered (or even applied-for) mark for similar products and rejects your application, and you just live without the registration.
That’s not the worst thing that can happen, though. You see, there are trademark monitoring services that keep an eye on applications to register trademarks and report to their subscribers about dodgy ones. These services aren’t cheap, but they’re worthwhile to large companies and/or companies that aggressively (and sometimes unreasonably) enforce their trademarks. In short, you’ve come to the attention of folks you really don’t want to mess with: adversaries who are rich, unreasonable or, often, both.
BLACK OPS vs. BLACK OPS
That’s what happened to a small brewery in Fresno, California. The founders named their brewery “Black Ops” to honor family and neighbors who have served in the military. Although they would later claim they don’t sell their beer outside of Fresno County, they applied to register BLACK OPS BREWING with the USPTO. The thing is, you can’t obtain a federal trademark registration unless you’re selling the goods across state lines (or your products “impacts interstate commerce”). The application failed because the USPTO easily found a prior registration for BROOKLYN BLACK OPS for beer.
The owner of that mark, The Brooklyn Brewery Corp., seems to have noticed the Fresno brewery’s application, probably thanks to a monitoring service. If there’s one thing trademark lawyers have learned over the last few years, it’s that craft brewers are very jealous of their marks.27See also this article, except read “trademark” every time you see “copyright.” This article doesn’t have that problem. And this one was larger than most and had the resources to aggressively enforce its marks, if necessary. And the Fresno brewery had just come to their attention.
When the Fresno brewery wouldn’t comply with a demand letter, Brooklyn Brewery filed a lawsuit and moved for a preliminary injunction prohibiting the Fresno brewery’s use of BLACK OPS. Although preliminary injunctions are supposed to be “extraordinary,” and the Fresno brewery contested every point strenuously, this wasn’t a close case: nearly identical marks for nearly identical products.28As an added bonus, apparently courts assume alcoholic beverages are consumed by people too sloshed, or too eager to get sloshed, to distinguish between brands. Considering that the Brooklyn beer apparently cost $29.00, that’s a mighty big assumption.
The Horror of Re-Branding
You feel bad for the Fresno brewery. They fought this case because they loved their brand, and possibly because they feared the consequences of re-branding. If you assign any value to branding, you should view re-branding with a degree of horror. A brand carries public recognition and reputation (known also as “goodwill”), which are hard-won assets. Changing the brand diminishes both of those assets, perhaps even destroys them, and you have to start the process of creating goodwill all over again. Worse, the longer you’ve used the mark, the more value you have to throw away. If you have to re-brand, the sooner, the better.
Trademark clearance searches are not foolproof, alas. The rudimentary search of the USPTO database only catches marks that are (or have been) registered or applied for. It also doesn’t reveal actual use, so you can’t tell if the mark is still being used, and still being used for the same products that it was registered for. Even professional search firms aren’t perfect. Some trademarks are so local, and “off the grid,” they just can’t be caught.
Still, you owe it to yourself. Before you fall in love with a brand, do what you can (and can afford) to make sure you’re the first to use it for products like the ones you want to use the brand with. Better to call off a doomed love affair early than late.
Thanks for reading!