Federal Craft Beverage Trademark Protection May Be In Peril
The “Flatizza” mark was applied for by Readi Spaghetti, a restaurant in Washington. Two months later the Subway franchise Doctor’s Associates Inc. applied for the same mark and filed an opposition to Readi Spaghetti’s application arguing the single restaurant location did not qualify as interstate commerce. It won. The TTAB held that Yelp reviews, internet advertising, and social media activity did not impact interstate commerce enough to qualify for federal registration. Neither did a location close to major interstate highways. Doctor’s Associates Inc. v Janco LLC, Opposition 91217243.
This case reflects a clear change in Trademark Office policy. It casts doubt on whether craft beverage producers who don’t yet distribute their product in other states can federally register their marks. The TTAB proceeding noted several things about the evidence of interstate commerce used by Readi Spaghetti:
- There was a no proof customers used the interstate highways to travel to the restaurant
- There was no proof of actual access of the website or social media by out of state residents
- There was no proof any customers were from out of state
It is too early to tell what impact the decision will have because it is non-precedential. However, I am recommending to my clients to act conservatively or as if they need a “plan B”. Here’s my takeaway, albeit it could be overkill:
- Ask your online reviewers to leave their city and state
- Document Google or Yahoo directions to your establishment from nearby interstate roads
- Ask customers who your establishment where they are from, and document out-of-state visitors with name, address, and date of visit
- Require customers who follow you or want discount coupons to leave a city and state in their account identity (name and street address can be anonymous)
Trademarks are one of a craft beverage producer’s most important assets. We encourage craft beverage producers in this situation to consult with trademark counsel for their unique circumstances and to create a custom brand protection strategy.
A special “shout out” or thank you to Scott Slavik for reporting this decision on Law 360.
About Tracy Jong
Tracy Jong has been an attorney for more than 20 years, representing restaurants, bars, and craft beverage manufacturers in a wide array of legal matters. She is also a licensed intellectual property and patent attorney.
Her book Everything You Need To Know About Obtaining and Maintaining a New York Retail Liquor License: The Definitive Guide to Navigating the State Liquor Authority will be available next month on Amazon.com as a softcover and Kindle e-book.
Her legal column is available in The Equipped Brewer, a monthly publication giving business advice, trends, and vendor reviews to help craft breweries, cideries, distilleries and wineries build brands and succeed financially.
She also maintains a website and blog with practical information on legal and business issues affecting the industry. Follow her, sign up for her free firm app or monthly newsletter.
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