Avoiding Trademark Headaches

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A small brewery based in Rutland, Vermont, was sued for trademark infringement by a large brewery based in Canada. In the case of Moosehead Breweries v. Hop’n Moose Brewing Company, Moosehead is claiming that Hop’n Moose’s use of the term “moose” as well as images of a moose in association with the sale of beer infringes Moosehead’s registered trademarks.

Regardless of how this dispute is ultimately resolved, this much is clear—this conflict was foreseeable.  In Trademark law, generally the first to use a mark for a type of goods is the one who holds the sole right to do so.  In this instance, Moosehead’s registered trademarks, which includes registrations to the marks MOOSE, MOOSEHEAD, and the image of a moose, all for beer, date back to the 1930’s while Hop’n Moose opened for business in 2014.  So…at the time Hop’n Moose launched its brewery, a trademark clearance search would have revealed that there was at least the potential for conflict regarding the use of anything to do with a moose being associated with beer.

In addition, Moosehead has been fairly aggressive in pursuing enforcement of its trademarks, and in all likelihood has substantially more resources to devote to trademark disputes than a newly started brewery.

Don’t Mix Your Drinks

The test for determining trademark infringement is whether there is a likelihood of people confusing two companies selling similar goods with similar marks.  A lot of people shrug and say, “you can tell the difference” or “it’s not a copy,” and figure they’re in the clear.  But it’s often not that simple. 

  • For one thing, marks do not need to be identical in order for infringement to occur—they just need to be similar.
  • A federal registration to MOOSE, in standard characters, covers all fonts, colors, and in many cases, any included designs and additional words or characters.  So the comparison of Hop’n Moose and MOOSE is based only on the words, not on any of the differences in imagery, color, or fonts and the penultimate question is whether the term HOP’N in front of MOOSE is enough to distinguish the source of the goods (ed. likely not).
  • Trademark law attempts to remove confusion as to the source of the products.  It is clear that a consumer would know that differently labeled beers are different beers, but would the consumer think two beers with the primary term “moose” in their name would come different breweries? (Consider how “Bud” is used in different ways and with different words, such as Bud, Budweiser, Bud Light, Bud Lime, etc., yet all of those are from the same company—that is the essence of trademark law, i.e., the consumer knows all those beers come from the same source.)
  • Lastly, there is an important distinction between technically not infringing a trademark and avoiding getting ensnared in a trademark dispute.  Even if an accused infringer is ultimately found not infringing, the trouble and expense required to demonstrate that in court can be overwhelming to any business. 

For many small businesses trying to get established, the last thing they need is to get a cease and desist letter (never mind having a lawsuit filed against them).  An accusation of trademark infringement can cause a major disruption to a business.  To hold your ground and prove there is no infringement could take years and exhaust the resources of the business.  The alternative is often to stop using the disputed trademark, which means a loss of substantial investments in developing a brand and having to redo a lot of hard work.  (In a very similar situation, Mooselick Brewing Co. was forced to stop use of “mooselick” by Moosehead Breweries, and ended up reopening as Granite Roots Brewing.)

Start with Clear(ed) Ingredients

Before starting any business, or launching a new product or service under a new mark (word, design, etc.), it is a good idea to perform a thorough trademark search.  A good trademark search will not only look at the USPTO trademark register—a thorough search will include a review of common law uses (uses online, corporate names, state registrations, etc.).  Importantly, your search should not be for only identical marks for the same goods/services, but instead should be for similar marks that are used on similar goods/services.

Even if your proposed trademark looks different and you have no intention of trying to tread on anyone else’s trademark rights, it is well worth making sure there are no potential trademark pitfalls before investing significantly in developing a market for a product with that trademark.  Knowing what marks are currently in use allows you to understand risks and hopefully avoid the hassle and expense of getting a cease and desist letter when you least can afford it (or at least not being surprised by it).

Vermont Artist’s Award Against USPS Affirmed

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Korean War Memorial, Washington, D.C.

Korean War Memorial, Washington, D.C.

On February 4, the Federal Circuit Court of Appeals affirmed a prior decision by the Federal Court of Claims that the United States Postal Service (USPS) should pay $573,000 to Vermont sculptor, Frank Gaylord (Barre, VT), for the USPS’s infringement of his soldier sculptures in formation that constituting part of the Korean War Veterans Memorial.  USPS put a portion of the monument on a postage stamp without Mr. Gaylord’s permission and profited mightily ($30.2 million in revenue) in doing so, but didn’t want to pay anything or very little (less than $5,000) to license the work. Further details of the case can be found here.

This has been a long running saga for Mr. Gaylord.  Prior opinions can be found: here and here.

Copyright Basics and Issues in the New Millenia

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I had the honor of speaking at the Vermont Arts Summit this past weekend on the topic of copyrights and meeting many artists from the Vermont area.  It was a great day and if you missed it, hopefully the Vermont Arts Counsel will be hosting another one and you’ll be able to attend.

For those who are interested, here is the presentation: Copyrights