Trademarks and beer have been historically intertwined since 1876 when Burton upon Trent-based Bass Brewery [in business since 1777] registered the now iconic Bass Red Triangle for Bass Pale Ale as the first worldwide trademark under the United Kingdom's Trade Mark Registration Act of 1875. The Bass Red Diamond for their strong ale became the second registered trademark.
Attorney Jeff Kosc, a partner at Benesch, Friedlander, Coplan & Arnoff, made this point during our conversation at TwoDEEP’s tasting room on Oct. 15 to underscore why branding is essential in the brewing industry. A brewery establishes its identity with its name and the connecting artwork, said Kosc, using the TwoDEEP coaster to illustrate two separate registrations at play—one for the name, another for the name within what we now associate its symbol—in this case an outline of Indiana surrounded by a circle. No other brewery can use this name and this artwork anyplace else in the world under protection of a registered trademark. Since 1876 every brewery has staked out its territory, and each has remained vigilant in maintaining its mark(s). “It’s essential to exercise due diligence and do exhaustive worldwide research,” says Kosc. “You don’t want to put out a lot money for labels, letterheads, etc. only to learn someone else has that name.”
Tom Schmidt, concurs. He incorporated his “Red Brick Brewery” in LaPorte in August 1996 to serve northwest Indiana as the State’s first post-prohibition production brewery and retrofitted an old brick warehouse into a 7-gallon operation. “Our first batch of beer was sold on April 22, 1997. Things were starting to look up, or so I thought. “In August 1997 I had to make a big decision. Pay someone else a licensing fee for the use of our company name or change it. I really liked the “Brick” Brewery name, and so did James Brickman, owner of Brick Brewing Company in Ontario, Canada. What was I going to do with all the newly made labels?”
Schmidt telephoned Brickman. They reached an agreement—Schmidt could use up his labels and he would change “Brick” to Back.
“Back Road Brewery is now a registered trademark and is exclusively marketed and sold as such,” said Schmidt., adding, “The new name has been beloved ever since [Jan. 1, 1998].”
Nashville-based Big Woods made their 2013 name change for marketing reasons, explains co-owner Jeff McCabe. “We are building multiple businesses (restaurants and brewing), with different concepts and different marks. We believe there is great value in the uniqueness of ''Quaff ON!" for beer and we like 'Big Woods' for very specific applications.
“With 3000 breweries developing and naming new beers all the time, establishing a unique name that is clearly registrable has become a big challenge - and frustrating for the team that comes up with a great name only to learn later that someone sold 30 barrels under a similar name five years ago,” offers Upland owner Doug Dayhoff.
“We try to do exhaustive research before proceeding with any beer we are going to bottle and distribute - but I always worry that some distant brewery 100 miles away served a few kegs of beer under that name a couple years ago and later tries to impede our use. Of course, the only winners in that situation are the attorneys.”
That’s why you have to understand protection rights, says Kosc. “You can’t tie up a name. You must brew and sell using that name within a timeframe.”
And then there’s Indiana’s own iconic Champagne Velvet as “an example of a brand that has a 100+ year history of trademark registration,” points out Doug Dayhoff. It is so well established one must proceed with caution before using the name even if no one actually brewed the beer for a long time.
“We do a good deal of research on names and terms that we use in the market,” says Bob Weaver, co-owner of Flat 12. “Often, the first thing that comes to mind has come to someone else’s mind as well, so it’s not easy. Some beers that have an element of satire or could maybe be challenged are just that, satirical names, and have been only loosely associated with some known entity or only served as a one-off, short-lived brew at the brewery or a festival. Knock on wood, we haven’t had any cease and desist letters to date.
“One area that requires additional diligence is when we have partnerships with BlueMile, Indy Eleven and James Hinchcliffe. In all three cases we’ve utilized legal contracts or letters of understanding that reflect the nature of the agreement to ensure a positive, mutually beneficial agreement. At the very least, partners are included in the governmental labeling process that ensures there are no challenges from a third party on the use of a likeness or name.”
Half Moon in Kokomo named “Elwood’s IPA” and “Cole Porter” for well known people by reaching out to the families of Elwood Haynes and Cole Porter. Brewer John Templet comments, “You never know how people will take something like that, but both families are thrilled. The only other time we have run into any concerns for a trademark is just before we opened up. The name Half Moon Restaurant was being used elsewhere. We wrote a letter asking permission to use the name and never heard back. We have had no issues to date.”
One wonders if the Bass employee who stood outside the registrar's office on New Year's Eve 1875 to be first in line to register the Bass trademark the next morning thought about making history. Ironically, the trademarks now are owned by Brandbrew SA, an Interbrew subsidiary based in Luxembourg, and word is out they are changing the brand image.