Thursday, January 1, 2015

Happy New Year, updates and the United States Trademark Office

Hi y’all and Happy New Year,

It’s been awhile since we’ve posted and we thought you might like an update. 

Since our last post we have received our permit approval from the Alcohol and Tobacco Tax and Trade Bureau (TTB).  It was 91 days in the making, which is not too bad if you consider the current average application time is around 112 days.  Next steps include obtaining a local alcohol permit and a state manufacturers permit.

We’ve also taken formal possession of our warehouse and our renovation will begin on Monday, January 5th.    

While waiting to start renovations, I thought some of you might be interested in our experiences with the United States Patent and Trademark Office (USPTO) and the trademark process itself.  To date, we’ve filed two trademarks.  The first has been awarded a notice of allowance and the second will be published for opposition shortly.

The USPTO has an excellent website that clearly describes the trademark process and also allows you to search for existing trademarks and trademark applications.  The first steps in the trademark process involve determining whether you need a patent, trademark or copyright.  After determining what you need,  you must identify the nature of your mark (is it a logo, etc) and clearly define the goods/services associated with your trademark as described in the International Classification of Goods and Services for the Purposes of the Registration of Marks.

After that you’re ready to start searching the USPTO database to see if there are any existing or applied for marks that may overlap with yours.  Then you have to figure out your basis (have you been using the mark or are you planning on using the mark in commerce) before filing your application.

Once filed, the application is reviewed and if any issues are identified, an Office Action letter is generated (insert ominous music here).  If there are no issues identified by the examining trademark attorney, then you receive a notification that your mark will be published for opposition (the opposition period is 30 days from publication).  At this time you can also start the process of registering your mark internationally. 

After 30 days, if there is no opposition then you will receive a Notice of Allowance (NOA).  After that you are required to file a Statement of Use, indicating your use of the mark in commerce, within six months of your NOA.  If that doesn’t work with your timelines (i.e. it’s taking a while to get products rolling) you can always file for an extension.

For our first Trademark, Second Line Brewing, we hired a well known online ‘do it yourself’ legal service (I think most of you can figure out which company we hired).  It was pretty easy, we filled out the paperwork on their website and paid them a minimal fee and waited patiently for our trademark.  Much to our surprise, it was denied by the examining trademark attorney on account of a  “likelihood of confusion”.   It seems that a defunct restaurant in Florida had trademarked Second Line Café a few years back and the trademark examiner surmised that since some restaurants brew beer (i.e. brewpub) then there this might lead to some confusion on the part of the consumer.  The fact that we were a brewery and not a restaurant seemed to have little impact on the examiner.

Well it was a pretty disappointing piece of news - we had already invested time and money in our brand and didn’t want to risk rolling out our business with a name we couldn’t legally protect.  We know of several breweries (more than 3) that have gotten caught in legal battles over trademarks…  We picked up the phone and called our friends at the online legal service.  We weren’t too surprised when they couldn’t offer any help.

Fortunately, Mark did a bit of homework and starting looking through the Trademark Manual of Examining Procedures or TMEP.  It didn’t take long for Mark to find a very similar case referenced in the TMEP.  The case involved Blue Moon beer and a restaurant called the Blue Moon Café (you can read about it here:  

In this case the defense (i.e. Blue Moon beer) cited the number of brewpubs relative to restaurants to support their defense that brewpubs and restaurants are not synonymous.  Needless to say, Mark’s research proved worthwhile and we responded to the USPTO citing precedent from their own manual to support our trademark application.  And guess what, it worked!  No expensive lawyers, just a little bit of research and a carefully written response to the USPTO.

Building on our prior experiences, we have applied for our second trademark sans lawyers, legal services, etc.  This time the trademark is for one of our soon-to-be flagship beers.  The initial review was unopposed by the examining attorney and it’s currently making its way through the trademark process.

Quick note, when you file for a trademark you need to remember to disclaim frequently used words such as “brewery” or “beer” otherwise they will send you an Office Action letter denying your application until you correct it.  It’s not a deal killer but will unnecessarily delay your application.   

Next time Mark will bring you up to speed with our building renovations as well as the lessons we have learned from the TTB application process.



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