So Long Dr Beer Love – Hello The BeerFathers

By on January 26, 2010 @ 8 PM (4 Comments)

Starting today you’ll notice a slight change here at Beer Love central – we are now no longer known as Dr Beer Love. We are now officially The BeerFathers.

Why, you ask? Well, it’s a long story but here goes…

Back on November 13, 2009, we got an email from Jay Hersh, who politely said we may be infringing on a trademark he owns for the name “Dr Beer.” It was nice enough and essentially said “Hey you’re probably unaware of the trademark, but I’ve had it since 1997 and I use it in conjunction with my beer tasting classes. Dr Beer Love and Dr Beer could be confusingly similar to someone so please be cool and stop using the name.” We appreciated his courteous approach and the fact that he came to us directly himself instead of through his lawyers.

So we emailed back and forth a few times to try to work things out in a way where we could keep the name and the web site address, but Jay felt strongly that if we said something that was libelous it could come back to him somehow. Rather than go to court or fight it out we agreed to change the name. Getting lawyers involved is rarely the right answer and on top of that we had been wanting to move the site from it’s Movable Type backend to WordPress for a while anyway, so it gave us a good opportunity to do that.

So we worked with Jay to come to a compromise of terms that benefited both sides. On our end we:

  • Offered to put some text on the top of every page of the Dr Beer Love site that said “Note: Dr. BeerĀ® is a registered trademark of Jay Hersh. We are currently working together to rectify any confusion over the name.” This linked over to his site and was our short term transition plan.
  • Offered to design a logo for him to use for “Dr Beer” as he didn’t currently have one.
  • Asked for a few months to find a new name, move the site into the new system and remove references of “Dr Beer” from the site.

On Jay’s end he:

  • Offered to let us redirect the Dr Beer Love site to the new site once we had transitioned it over.
  • Offered to write some guest blog spots for us on the new site.
  • Offered to let us work with his wife to do trade name research for whatever new name we used.

We didn’t wind up taking him up on his offer for the trade name research (too generous on his part really) but we did do the research ourselves and are clean and clear. Everything else we did. We thank Jay for working with us and it goes to show that you can really think win-win and work things out together if you just treat each other kindly and respectfully. It’s kind of refreshing in our sue-happy culture that things can still be worked out without legal involvement and both sides can come away feeling better for it. I think the fact that we’re both good beer lovers was a common ground that we both connected through. I’ve always said craft beer lovers are some of the easiest going people you’d want to meet and this whole interaction just proves that crafties are good people.

Now how did we come up with the new name? We put together a list of a few good ones following the same criteria for the old one – we wanted it beer focused, yet somehow related to classic movies. You may or may not have known that Dr Beer Love was named for the movie Dr Strange Love and you may or may not know that we love the classic movies (so much that Son Beer Love is working on watching every one the American Film Institute’s Top 100 Films of all-time – 57 down, 43 left to watch). We also, as an added bonus, wanted to give a nod to our status as fathers, since Son Beer Love became a father last March. So when we started working on putting the names together (Citizen Beer Love, BeerFellas, etc) one immediately jumped to the top of the list – The BeerFathers (for the movie The Godfather).

We wanted some input on it so we asked a few of our favorite beer bloggers (The Beer Babe and The Beer Wench) for some input on the list of names and they all voted on the same one – The BeerFathers. They said it really fit our personality and niche in the beer space. Who could argue? We checked to make sure there were no possible trademark conflicts and registered the domain name. We had our brand.

Then we spent what little free time we had in December and January working on transitioning the site over – we designed a new logo with an actual font called “The Godfather” and figured out all the programming challenges of getting the site moved from Movable Type to WordPress (we have always been happy with the site we designed so we wanted it to look the same). Once we got all the challenges figured out we exported the Dr Beer Love site (175 posts, 77 categories and 346 comments) and imported it into WordPress (the easiest step, actually), did a search and replace on all the names and then set up every page of the old Dr Beer Love site to find the appropriate new page on The BeerFathers site (so if someone tried to go to the Abita Turbodog review on Dr Beer Love, say through a Google search, they would immediately get redirected to the Abita Turbodog review on The BeerFathers, instead of having to search for it – it’s a good courtesy for all the search users out there). Once we felt confident everything was set up correctly we “flipped the switch” so to speak and started sending all the traffic to the new site.

So in a little over two months we were able to rebrand and completely move the site over. And that’s how we became The BeerFathers. We’ve got a backlog of about 50 reviews to get on the site and we’ll be working on that with a lot of new content planned for 2010. We also added a few features to the site that we’ll write more about soon that we think you’ll really like. In the meantime we say “Cheers and good beers!”


4 Comments (Add Your Comments)

  1. Welcome back!! Glad that everything seemed to work out in the end :)

  2. Seems like the best possible outcome, and its good to hear people can still work things out like adults!

    I’ll be changing the link to you from TheBrewClub to reflect the new name.

    Good luck, the site looks great!

  3. Dr. Beer says:

    I just wanted to thank John once again for the classy way he handled this. I’ve held the Dr. Beer trademark for quite some time now and he’s not the first person I’ve had to ask to make changes to not infringe upon it.

    One was a major US brewery, and in case you’re wondering yes they ignored my personal correspondence to them to stop infringing and only complied when I had my lawyer send them a letter documenting my trademark and threatening them with a lawsuit.

    As many of you may know, the internet is the electronic equivalent of the wild west. Only in the wild west it was much easier to actually track someone down and apprehend them. Many internet service providers don’t act responsibly, even when presented with evidence that their clients are using their services to infringe upon other people’s trademarks. They typically refuse to take any action against those using their hosting services to conduct infringement until they receive a court order forcing them to do so. As you can imagine this gets tedious, costly and time consuming for legitimate trademark holders.

    In case you wonder why it’s necessary to enforce your trademark if you don’t then you lose it. There are many instances of trademark names which were diluted or effectively destroyed through lack of enforcement. These days we make photocopies, but for a long time when you wanted a photocopy of something you made a “Xerox” of it. Xerox had to come up with the generic term “photocopy” and actively promote its usage in order to not have their corporate trademarked name become an English Language word.

    Here are some other trademarks that were lost because they became dictionary words: Escalator, Aspirin, Astroturf, Band-Aid, Frisbee, Heroin, Jacuzzi, Jello, Laundromat, Qtip, Rollerblade, Saran Wrap, Scotch Tape, Styrofoam, Thermos, Trampoline, Velcro, Zipper. There’s lots more (see Wikipedia) but you get the point…

    This is an issue that vexes many small businesses, the craft beer industry among them. I’m from the Boston area and while you’d think craft brewers would stick together one of the more notorious episodes in this regard involved the Boston Beer Company, makers of the Sam Adams line of products.

    The Boston Beer Co. sued or threatened to sue Commonwealth Brewing Co., Boston Beer Works and the Boston Brewers Festival, among others, for trademark infringement. You can see the finding in the most prominent case, that against Boston Beer Works at http://cases.justia.com/us-court-of-appeals/F3/9/175/540362/

    In filing, or threatening to file, lawsuits they conveniently ignored several facts. One of them was that the name Boston Beer Company had been in existence a very long time, having been the name of a company that had gone out of business decades before Sam Adams came into existence and the trademark abandoned. Once abandoned it is difficult to resurrect a trademark. While they appear to have done so, in the interim between its initial and subsequent uses there were many instances of others using the term “Boston Beer”.

    The other is that, in general, you can’t trademark the English language, or something generic or descriptive. A trademark must be unique. That’s why you see so many made up or intentionally misspelled trademark names.

    So even were the Boston Beer Co. still a valid trademark you can’t stop someone calling a brewer’s festival held in Boston the “Boston Brewer’s Festival” by claiming infringement. Nor could you stop someone from stating that their beer was “brewed in Boston” if that is factually correct.

    Furthermore in order to infringe upon it there must be a reasonable likelihood that usage of a similar name will cause confusion in the mind of consumers. In the case of the Boston Beer Works, while the court found that “Boston Beer Company” was a valid usage they held that the corporate name was not widely known in that its products were marketed under the Samuel Adams brand name and that the company did not widely utilize the corporate name nor had they established a public connection between the company name and the Sam Adams brand. They further held that the terms “Boston” and “Boston Beer” are descriptive nor were they registered trademarks (owing to their generic nature). Finally they held that because the Boston Beer Company had not clearly established that name as an integral part of its marketing and branding there was little likelihood of confusion on the part of consumers between it and the Boston Beer Works.

    In my case I had established the Dr. Beer trademark and used it for many years. It is the only moniker that I use for certain activities I engage in. It arose from my doing work training prospective beer judges by serving a beer doctored with certain off flavors side by side with an undoctored beer, an activity for which, in order to avoid confusion, I have created the generic term “sensory evaluation training”, of which my seminars are conducted under the Dr. Beer brand name, a name whose use I have also licensed to some individuals who I know to be capable of conducting such training in a quality manner. I subsequently came to use the Dr. Beer trade name for all my teaching activities related to beer.

    Because of all this John’s use of the name “Dr. Beer Love” was sufficiently similar to my trademark that in order for me to protect my trademark it was necessary for me to contact him. While I personally prefer to do lots of other things besides protecting my trademark doing so is something that trademark law actually requires me to do. Were I to not take this action then the trademark would become invalidated. So once having learned of the existence of Dr. Beer Love I was essentially obligated to contact John or risk forfeiting the trademark granted to me.

    I hope that this detail helps the readers of this forum better understand these considerations, including the challenges craft brewers face in creating and maintaining a brand, why I contacted John, and why the actions John took was the right thing to do and that he deserves a lot of credit for the professional and respectful manner in which he handled this which stands in contrast to the manner in which such things are all too often handled.

    cheers,

    Dr. Beer (TM) aka Jay Hersh

  4. Bruce says:

    I am glad to see you guys back at it! I was wondering what happened. Thought maybe you started to do tea reviews – lol.

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