Jorge Espinosa, partner, Espinosa Trueba Martinez. Miami
Jorge Espinosa, partner, Espinosa Trueba Martinez. Miami (Gaston De Cardenas)

Growing up on the East Coast in the 1970s the height of beer fantasies was the then-mythical Coors, which was only brewed and sold west of the Mississippi. A handful of national brands filled the local shelves but, with the exception of some locally available smaller brewers like Iron City in Pittsburgh, there was little beer choice.

Nearly 50 years later the craft beer revolution is in full swing and the landscape has changed. Hundreds of craft brewers have opened nationwide. The impact is no less significant in Florida. Dozens of craft beers are now made by quality brewers throughout the state—St. Petersburg (Cycle Brewing), Tequesta (Tequesta Brewing), Gainesville (Swamp Head Brewery), Wynwood (Wakefield Brewing, Wynwood Brewing), Dunedin (7venth Sun Brewing), Boynton Beach (Due South Brewing), Oakland Park (Funky Buddha), Doral (M.I.A. Brewing), Tampa (Cigar City Brewing) and many more. And like in Florida, hundreds of craft breweries have proliferated throughout the country.

However, with the popularity and growth of the craft beer business, the industry has run into a problem common to other industries—conflicting trademarks. A trademark is a word or combination of words, or a graphic design, or a combination of both, that is used to identify to the consumer the source and identity of a product. A trademark is important to consumers because it lets them know the quality, taste and other characteristics of what they are getting. It is important to the brand owner because it serves as a way for products to build consumer loyalty and goodwill. Colgate for toothpaste, Coca Cola for soft drinks and Apple for computers are all trademarks.

The problem in selecting a trademark in a crowded field—such as the thousands of brands of craft beer—is that even if the brewery has no desire to infringe another brand, it is hard to find a generally desirable name that has not already been taken. Particularly when breweries try to come up with plays on the words hops or malt, chances are that the mark has already been registered. There have already been dozens of lawsuits nationally involving craft beer trademarks.

This litigation trend has also come to Florida. A recent trademark dispute between breweries in Florida occurred in 2014 between Coppertail Brewing Co. LLC, of Tampa and Copper Top Brewery, LLC, then of Wellington and now of Boynton Beach. In that case Coppertail owned a federal registration for the mark COPPERTAIL BREWING CO for “beer, ale, lager, stout and porter.” According to the complaint, Coppertail notified Copper Top that its name was likely to generate confusion in the marketplace with its use of the mark COPPERTOP. Both marks involved the use of a stylized C. A lawsuit followed (MD#8:14-cv-02727). Shortly after the suit was filed, it was dismissed presumably due to a private deal whereby Copper Top Brewery changed its name to Copperpoint. However, the insidious nature of this trademark problem is such that even after that suit was settled, a search on Google still revealed Copper Top Brewing Company of San Antonio, Texas, and Coppertop Alehouse of Prescott, Arizona.

Hurricane Force

In another recent case, the trademark conflict was more subtle. In Big Storm Brewery v. Due South Brewing in the Middle District of Florida, Due South was using the Saffir-Simpson hurricane wind scale to describe the strength of its beers (Category 1, 2, etc.). Big Storm began doing the same. Counsel for Due South contacted Big Storm and threatened to take legal action if they did not discontinue the use of the strength designations. Big Storm filed a declaratory judgment asking for findings that Big Storm’s use was not infringing, was fair use and did not dilute Due South’s rights. 
 
The lawsuit was eventually dismissed in March, suggesting that the parties had reached some sort of agreement. Although the terms of such an agreement would be private, the category references for its Big Storm’s Hurricane Series Beer remain on the brewery’s website.
 
So what is a new Florida brewer to do to avoid the often crippling cost of litigation?
 
• Consult with a trademark attorney early in the process of planning your new business.
 
• Do not fall in love with a name. Selecting a trademark is a business decision and whereas a particular name might appeal to you, hundreds of other names would probably work as well.
 
• Pick names that are different, unique and distinctive. This will not only make it more likely that the name is available and unused by others but will also make you stand out in the crowd.
 
• Have your attorney thoroughly search for similar marks and uses in the marketplace before settling on a trademark. Although running multiple national searches can cost several thousand dollars, it is a worthwhile investment. 
 
• Once you select your mark, have your attorney monitor the marketplace. Problems are often resolved far more cheaply if you catch them early. Cheers!