Intro to Trademarks for Distillers

Intro to Trademarks for Distillers
By Brendan M. Palfreyman, Harris Beach PLLC, Attorneys at Law

Do you have a distillery or a distillery in planning in New York?  Congratulations!  If you’ve begun the process I’m sure your knee deep in federal and state applications, equipment and location acquisition, funding, and a million other issues.  One issue that is frequently overlooked by distillers that is of critical importance is trademark protection.  While it may be hard to think about intangible property like a trademark registration when there is so much tangible property to worry about, distilleries now more than ever should be concerned with securing trademarks.

But let’s take a step back, what is a trademark?  A trademark can be a word, phrase, logo, or even color that distinguishes your goods from the goods of others and identifies you as the source of those goods.  There are several types of trademarks, primary among them common law trademarks, state trademarks, and federal trademarks.  Common law trademark rights arise via the use of trademarks in commerce.  That’s right, you don’t need to file any paperwork or pay any fees to gain common law trademark rights.  So why bother with registering your trademarks?  Because the scope of protection and rights that accompany a common law trademark are limited. For example, common law trademarks only provide rights in the areas the marks were used and reasonable zone of expansion therefrom.  Thus, if you sell spirits in Albany you would have common law trademark rights in Albany and a small amount of surrounding area. However, you would not be able to stop someone from using the same exact name on the same exact products in Buffalo.  Also, in a much scarier scenario, someone else could apply for a federal trademark for your exact name and ultimately force your distillery to change names or restrict the geographic expansion of your sales.

So what’s the answer?  A federal trademark registration for at least the distillery name and more providently each of the products you plan to bottle and sell.  The benefits of federal registration are numerous and include the following:

  • • Nationwide notice of ownership of the mark and nationwide priority of use. In other words, your distillery’s right to use the trademark, and to exclude others from using the trademark, extends to all 50 states even if you haven’t sold beer there.
  • • Protects against the subsequent federal registration by others of confusingly similar names. Thus, if another distillery were to try to register a trademark for your distillery’s name, the United States Patent and Trademark Office would prevent them from doing so.
  • • Serves as evidence of the validity and exclusive ownership of your mark at trial
  • • Allows you to use the ® symbol, which puts others on notice of your federal registration
  • • Grants the right to file a trademark infringement action in federal court, which provides different and better recovery options than a suit in state court.
  • • Deters others from using or applying for your trademark.

Among the most important of these benefits is that fact that a federal registration provides excellent (though not absolute) protection against you having to rebrand and change the name of your distillery after years of operation and building brand recognition.  This can be a devastating blow to a distillery, and it is happening more and more these days, especially given that courts have taken the position that spirits, wine, and beer are related for trademark purposes.  In other words, a brewery with a registered trademark for Silver Spoon Brewery could have a strong argument to force a Silver Spoon Distillery to change its name.  A federal trademark is your best (though not an absolute) defense against such a trademark conflict. cialis online without prescription

So what is your best bet? First, at the same time you are forming your company and applying for your licenses, conduct a proper trademark search before deciding on your distillery name or individual product names. Second, apply for and obtain federal trademark registrations, preferably on an intent-to-use filing basis. These topics and others will be covered in future Guild blog posts.

Author Information: Brendan Palfreyman is an attorney with Harris Beach PLLC in Syracuse, NY and a member of the NYS Distillers Guild.  A primary focus of Mr. Palfreyman’s practice is representing and counseling distilleries in New York State with respect to legal issues including trademark and copyright.  Mr. Palfreyman is an award winning homebrewer and a craft beer and spirits advocate. ativan for sale


Brendan Palfreyman
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This blog is intended to provide general information on a wide range of issues, including legal issues, affecting the distilling industry.  It is not intended to provide specific legal advice and no legal advice is given.  You understand that merely using this blog does not create an attorney client relationship between you and Harris Beach PLLC or Brendan Palfreyman. The blog should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.