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

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

Good luck, the site looks great!