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Samuel D. Fleder, Esq.
Smith Debnam Narron Drake Saintsing & Myers, LLP
Raleigh, North Carolina

Selecting a unique, memorable, and descriptive name for your next beer release is becoming a daunting task in the increasingly-crowded craft brewing landscape. The same holds true for your brewery’s nom du guerre.  The US Trademark Trial and Appeal Board’s decision in Bell’s Brewery, Inc. v. Innovation Brewing last December is a timely reminder that brewers sometimes must resort to litigation to protect – or more accurately, in this case, defend – their name marks. The opinion also provides a handy rundown of the du Pont factors, which are the 13 guidelines that determine whether your mark steps on the toes of a different mark. The du Pont factors are what a judge will ultimately consider if you end up in a similar legal fight to protect your mark or to push your application through to approval.

In this case, upstart Innovation Brewing of Sylva, NC (population 2,644) applied to register its name as a trademark with the US Patent and Trademark Office. Well-known, regional craft brewer Bell’s Brewery opposed the application – and went to court to do so – arguing that Innovation’s name infringed on Bell’s marks “Inspired Brewing” and “Bottling Innovation Since 1985,” which Bell’s deploys on its coasters, truck wraps, banner/page ads, and other marketing materials.

The critical legal standard in a trademark dispute is the “likelihood of confusion,” or in this case, the risk that a consumer will be unable to distinguish “Innovation Brewing” from “Inspired Brewing” or from “Bottling Innovation Since 1985.”  The du Pont factors are a set of 13 guidelines set out in 1973 court case and derived from section 2(d) of the Lanham Act, which is the primary US trademark statute. The du Pont factors (abridged version) are:

  1. The similarity of the marks as to appearance, sound, connotation and commercial impression.
  2. The similarity and nature of the goods to a prior mark that is currently in use.
  3. The similarity of trade channels (where the good is advertised or purchased).
  4. What kind of buyer purchases the goods – “impulse” buyers or those who have spent time carefully researching their purchase decision.
  5. How famous the mark is (via advertising, or how long it has been around).
  6. The number and kind of similar marks in use on similar goods.
  7. Whether there is already any actual confusion involving the mark.
  8. How long the mark has been in use with another, similar mark without confusion occurring in the marketplace.
  9. The variety of goods on which the mark is used (does it occur on just one product, or a “family” of products).
  10. Whether there is involvement or an agreement between the applicant and the owner of a prior mark, involving consent to use the mark, or limits on who can use their mark in certain kinds of marketing or geographic locations.
  11. The extent to which applicant has a right to prevent others from using the mark.
  12. How severe or serious any potential confusion may be.
  13. Any other fact regarding the use of the mark which the reviewing court finds helpful or relevant.

Importantly, no single du Pont factor is necessarily more important than any other. These kinds of trademark fights are highly dependent on the facts of the given case.

The Bell’s v. Innovation fight is a classic example of this idea. The TTAB found that both Innovation’s and Bell’s marks related to identical goods (beer), that they moved in the same channels of trade, and targeted the same customers. With each party pricing its beer between $3 to $8 per pint, both Innovation’s and Bell’s target customers fall within the definition of “impulse buyers,” which leads to an increased likelihood of confusion because such customers “are held to a lesser standard of purchasing care” (sorry, bottle traders).

Even though most of the du Pont factors weighed towards Bell’s argument that the marks were confusing, the TTAB concluded that the case turned on the first factor – similarity of appearance, sound, connotation, and overall impression – and held that Innovation’s mark was sufficiently distinct and could be duly registered. The TTAB directly cited the Webster’s Dictionary definitions of both “inspired” (adjective; “very good or clever”) and “innovation” (noun; “a new idea, device, or method”), and concluded that “[t]here simply is no overlap in the meanings of these two words.” In this case, the dictionary definition outweighs the rest of the analysis – and Innovation Brewing doesn’t have to re-order its entire inventory of branded glassware and coasters.

Takeaway

Deciding on a brewery name, or the name for a one-off beer release can be enough of a creative headache on its own. However – and especially when making a “big” naming decision, like for the company, a registered d/b/a, or a product line that aspires to a serious distribution footprint – spend a few minutes thinking through the du Pont factors, and comparing your name selections against a thorough Google search and trademark search for any potential overlap.