3 Trademark Lessons from Empire Strikes Bock (beer)

On February 3, 2014, Walton Street Brewing Company, DBA Empire Brewing Company, filed for trademark registration of its beer name, “Strikes Bock,” the word mark being “Empire Strikes Bock.”  Empire has reportedly been selling this beer for more than 7 years on-tap in its own pub in Syracuse, New York.  The attempt to register the trademark was prompted by the company’s interest in bottling their bock and selling it more broadly. 

On October 15, 2014, Lucasfilm Ltd., LLC filed an opposition to the registration in the U.S. Patent and Trademark Office.  The opposition alleges that consumers will likely be confused into thinking that the Empire Strikes Bock beer is affiliated with Lucasfilm as its source and that use of the beer name is likely to dilute the distinctive quality of the Lucasfilm mark.

The opposition is currently pending before the Trademark Trial and Appeal Board.  Regardless of which party prevails in the TTAB proceedings, there are three trademark lessons all small businesses can take away from this case.

1.        Be careful in naming your products

Microbreweries are well-known for their strange and witty beer names.  Just a few of the thousands that are already registered trademarks include: “In Dog Beers I’ve Only Had One,” “Pygmy Owl Itty Bitty IPA,” and “Responsibly” (you can imagine their marketing…Drink “Responsibly”).  But, when making a clever play on the words of an existing famous trademark, caution is warranted.

Empire’s manager describes himself as a Star Wars “fan boy” and a “big dork.”  The beer name is obviously a play on one of his favorite movies and intended, in the sense of parody, to pay tribute to the film.  Lucasfilm, however, was not amused.  Disney, which owns Lucasfilm has a long history of aggressively protecting its intellectual property…just ask Joel Thomas Zimmerman (A.K.A. Deadmau5).  He has been in a long-standing battle with Disney over his use of Mau5head logo, which bears some similarity to the shape of Mickey Mouse’s head. 

So, what should a small business owner, like a microbrewery, do?  When you’re in the process of naming your products, engage the services of a trademark attorney.  Even if you decide not to pursue federal registration of the product names, you should still have your attorney perform a “clearance” search to ensure no one else is already using the name you want. 

2.       No one is too small to be sued for infringement

Technically, Empire Brewing has not been “sued” for infringement, yet.  Lucasfilm filed an opposition to Empire’s trademark registration application.  But, it demonstrates that even a small company can catch the attention of a large trademark holder. 

Some small business owners believe that their small volume of sales does not warrant the attention of a large trademark holder and that no one would consider it worthwhile to sue them, because they would not be able to receive much in damages.  These owners are missing an important aspect of trademark law.  Protect it or lose it. 

Trademark rights stem from usage of the mark and its effectiveness in identifying the trademark holder as the source of goods labeled with the mark.  If a trademark owner is not diligent in protecting its mark from others using the same or similar names, the effectiveness of the mark as a source-identifier can be diluted and the owner can actually lose their trademark.  So, suing for infringement is not just about money damages, it's about protecting the value of your brand.

That’s not to say that a trademark owner has to be aware of every tiny use of their mark.  Very small (“de minimis”) infringement may not warrant action.  So, if you brewed your own beer, labeled it “Empire Strikes Bock” and served it only to your friends in your basement, while watching the Star Wars trilogy, that is not activity that threatens Lucasfilm’s trademark and they would not be expected to sue you.

How far does de minimis infringement go?  While Empire was using the “Strikes Bock” name only in its own tavern, it escaped the attention of Lucasfilm.  If they had been aware of the beer, though, it probably would have warranted at least a letter from their attorneys.  But, when Empire decided to expand their offering to bottles sold outside their own tavern and possibly out-of-state, Lucasfilm was obligated to act (assuming they had a reasonable belief that use of the name could harm their trademark). 

The lesson here is that if you are using a name that is the same or similar to an existing trademark, you are a potential target for a lawsuit, no matter how small your business. 

Small business owners should work with a trademark attorney to periodically survey the landscape to head off any potential conflicts before they begin.

3.       Registration is much less expensive than litigation

Two common arguments small business owners give for not filing for trademark registration are: 1) “it’s too expensive,” and 2) “if someone complains, I’ll just change the name of my product or business.”

Filing for registration of your trademark generally will cost somewhere between $1200 and $3500.  

If someone complains that you are violating their trademark, you basically have two options.  You can acquiesce and change your name or you can fight for your mark. 

Depending upon what the disputed name is, how long you’ve been using it, and how much you have invested in labeling and advertising, changing a name can be an expensive process.  If it’s your business name, there are a variety of filing requirements with state and federal agencies, you will have to spend the time and money informing your loyal customers of the change, and you will have to change signage and other advertising.  Even if the disputed name is to one of your products, like a German-style bock beer, you will need new beer labels, new beer cases, new beer tap handles, etc.  Any of these options can easily dwarf the cost of filing for registration. 

If your mark is valuable, you may decide to fight for it.  Doing so, however, is a very expensive proposition.  At a minimum, a court case will cost tens of thousands of dollars.  Often such cases will cost six figures or even more.  One case will easily cost more than the registration of all of your trademarks.

So, the question is not whether you can afford to register your trademarks, it’s whether you can afford not to register your trademarks.

Small business owners should work with a trademark attorney to come up with the best strategy for protecting their brands.  In the case of a microbrewery, for instance, an attorney might suggest first protecting the company name and logo.  Then, as some of their microbrews prove to be more successful than others, they might prioritize the beer names for which to seek registration. 

The important thing is to get started.  There are more than 2000 microbreweries in the U.S. each with a dozen or more beer names.  The potential for conflict is huge, the consequences significant, and the prevention simple.

Small business owners should engage a trademark attorney to perform a "clearance" search before committing to a company or product name.

Small business owners should work with a trademark attorney to periodically survey the landscape to head off any potential conflicts before they begin.

Small business owners should work with a trademark attorney to come up with the best strategy for protecting their brands.