Beer, Wine & Spirits Industry

Intellectual Property Services

Trademark Searching/Clearance  |  Trademark Applications


   

We advise alcoholic beverage producers in the following IP protection areas:

  • Clearing brands for your company and product names.
  • Protecting your trademarks through the U.S. Trademark Office and abroad.
  • Protecting your trade dress (bottle designs and packing) with the U.S. Trademark Office and abroad.
  • Reviewing and clearing your advertising copy and can/bottle designs.
  • Consulting on product portfolios for maximum protection of brands.
  • Enforcing your rights against infringers and defend trademark or copyright infringement claims from third parties.

    


Trademark Searching/Clearance

We generally recommend running a search of your potential mark before filing. This is meant to hopefully identify any major issues in the application process so that the client can take action before too much money is spent in the registration process. We review for not only third party marks on the federal and state trademark registers that may block you, but also unregistered names that could still block your use. We also look out for other issues including, whether your mark may be viewed as descriptive, geographically descriptive, or merely a surname, to avoid derailing your application.

We offer two levels of searching at a flat rate:

Preliminary Search

$650
(In house search of all federal and state trademark databases and internet investigations)


Full Search

$1,500
(comprehensive search by our vendor including everything in the prelim and also wide ranging common law databases)

At the conclusion of the search, we issue you an opinion detailing the risks in moving forward to both use and registration. Most clients feel comfortable running our in house preliminary search though some like a more comprehensive review. Once you feel comfortable with the risk levels, we can file an application.
  

  


Trademark Applications

Whether you conduct a trademark search or not, the goal is to file an application for your mark with the US Trademark Office. You can file an application based on actual use in commerce (e.g. you are selling beer that has crossed state lines or are operating a taproom under the mark) or intended use (e.g. you are in the planning stages or haven’t crossed state lines. The benefit of filing an intent to use application is your priority date is set as your date of filing, not when you began using the mark.

There are several hurdles to jump once you file an application:

  1. Examination by the Trademark Office;
  2. Publication; and
  3. Proof of use (applicable only to intent to use applications).

The first hurdle, examination, generally results in some minor “Office Action” by the Trademark Office where they mostly require us to make some minor amendments or provide more information. Occasionally though we do receive more substantive Actions which require more time and effort to respond. The second hurdle is where third parties can start a mini-litigation at the Trademark Office if they think your mark will harm their rights. We generally see these very rarely but they can happen. The final hurdle is where you have to prove use of your mark in interstate commerce to register. You can “buy” up to 3 years to prove use on a six-month basis.

We offer the following levels of flat fees to help control costs in the registration process:

Level One: $750

  • Includes initial filing fee of $275 for one Class (type of good/service) through to registration (excludes handling of Office Actions, appeals, and oppositions, which are billed hourly)

Additional Classes add $275 per Class

Level Two: $1,000

  • Includes initial filing fee of $275 for one Class (type of good/service) through to registration and handling of minor Office Actions (excludes handling of substantive Office Actions (e.g. likelihood of confusion, surname, descriptiveness, genericness, and failure to function as a mark), appeals, and oppositions, which are billed hourly)

Additional Classes add $275 per Class

Level Three: $2,000

  • Includes initial filing fee of $275 for one Class (type of good/service) through to registration and handling of all Office Actions (excludes appeals and oppositions, which are billed hourly)

Additional Classes add $275 per Class

ITU Applications:

  • Same Levels as Above with the Following Flat Fees Added
  • Statement of Use – $300 (Inclusive of Filing Fees)
  • Extension Request – $200 (Inclusive of Filing Fees)

  


After you get your registration you will eventually have to file renewals to keep your trademarks alive. They are due every 10 years with an initial renewal due between the 5th and 6th year of registration.

We offer the following flat fees for these renewals:

Declaration of Use and Incontestability (Between 5th & 6th Year)

– One Class: $625

Declaration of Use and Renewal (Every 10 Years)

– One Class: $650

Additional Classes will add additional filing fees on a per Class basis.