It’s the scenario you hope never happens. You developed a new alcoholic beverage, came up with the perfect clever name for your product, and established a strong branding presence in the region. Then the unthinkable happens; you get a letter from a lawyer representing a winery across the country, alleging that you infringed on the name of a merlot that you've never heard of.
These “Cease & Desist” letters (or C&D’s) can be terribly frustrating for new businesses and ironically only appear once your brand awareness has taken off. So what are your options if you receive such a letter?
First and foremost, you have to contact a lawyer, preferably one with considerable trademark experience. I have personally written dozens and dozens of very similar Cease & Desist letters and have significant experience dealing with opposing attorneys who don’t understand this area of law. With stakes so high, you need to hire a lawyer who is familiar with the process.
The key thing to understand is that trademark infringement claims can be defensible under the right circumstances, such as descriptive fair use (i.e. the phrase at issue describes your product). Also, it is imperative to understand WHY you received this letter. Typically, these letters are sent if there is a concern that another mark could create a likelihood of confusion as to the brand. Even if the sender of the letter doesn’t think a customer would mix up the two, they may still nevertheless send a Cease & Desist in order to enforce their brand, so as to preserve their own right to the mark. This is an odd concept, but it’s important to understand that another defense in a trademark dispute is that a party abandoned their trademark rights by failing to enforce their brand against infringers. Furthermore, failure to enforce a trademark can lead to “genericization.” A prime example of this is the word “escalator”, which was previously trademarked, but lost its legal protection as it became a generic descriptive word.
What is the best case scenario? In an ideal world you should contact a lawyer each time you plan to sell a new product or get label approval. (Side note: Please be aware that TTB granting label approval has no bearing on whether or not your brand/trade name violates federal trademark law). An experienced trademark attorney should have no problem finding whether or not your brand or slogan idea has been taken and can register it for you for somewhere between $500 - $1000. Once you have registered the trademark, the tables now turn and you can be the party on watch for potential infringers.
If funds are limited or feel you like rolling the dice, you can always run a check on the U.S. Government Patent & Trademark Office’s Registry. Caveat: this will only tell if a name or slogan has been trademarked – it does not guarantee that it is free for use. The concept of “prior continuous use” is just as enforceable as having a trademark registry with the USPTO, it just takes more time and money to prove.
In summary, trademark Cease & Desist letters are always bad news but they don’t necessarily mean you have to change your name – it is highly recommended that you consult a lawyer before you do that. The best practice is to consult a trademark attorney before you establish a new brand to help ensure it is defensible, and that you have the right to stop others from infringing on your popular new brand as well.
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