- By Arianna Auber American-Statesman Staff
Over and over, the craft beer industry describes itself as a community, an oversized group of like-minded people who prefer to collaborate and cheer each other on rather than openly compete — despite how tough it can be to get shelf space and grow a fan base in an increasingly saturated market.
More than 4,000 breweries are up and running across the country as of last year, according to the trade group the Brewers Association, a number that now likely tops or nears the historical high of 1873’s 4,131. One of the keys to staying afloat amid so many others is making sure to anchor a brewery’s identity with a memorable name, logo and design that people won’t confuse with another brewery’s. Or with another beverage brand, for that matter.
Oasis, Texas Brewing had been producing beer for less than six months when president Max Schleder got a call from Colorado beer behemoth New Belgium Brewing, a 25-year-old brewery that in the 1990s was integral to introducing good beer to Americans used to the blander taste of macro options.
“We get a call two weeks after the Great American Beer Festival from none other than the famous Kim Jordan,” the co-founder of New Belgium, Schleder said at a recent interview. “I was so excited to hear from her. I thought maybe she wanted to do a collaboration with us.”
Needless to say, that’s not what Jordan wanted.
Instead, Schleder said, she told Oasis, Texas Brewing — fresh off a gold medal win at the beer festival — to change the name of its Slow Ride Pale Ale or to serve it only in the Oasis taproom. New Belgium was about to release a Slow Ride of its own, a session IPA whose name was inspired by a bike race New Belgium throws every year at a philanthropic event called Tour de Fat. The request threw Schleder for a loop.
“We’re six months old at this point,” he said. “We’re not thinking about trademarks.”
Trademarks protect companies and their intellectual property, guaranteeing that a word, phrase or symbol integral to their business isn’t used by another company in a related field. Breweries are encouraged to trademark the name of their business and each of their beers and can sue if they are infringed upon. Resolving the conflict more amicably is an even better option, though it doesn’t always work.
Attorney Angel Tomasino is well aware of these disputes. Based in San Antonio, he bills himself as “the hoppy lawyer” who focuses his law practice primarily on craft-beer-related issues, most often “advising start-up breweries in Texas on intellectual property and trademarking, in addition to business decisions,” he said.
He recommends to his clients “to always come up with more than one name. Don’t get your heart set on one until you’ve done a search to make sure it’s not in use and registered federally through the trademark office.”
Once you’ve got one that seems original and free of trademark restrictions, he said, apply to register the mark even if you haven’t started brewing beer yet. Keep in mind, though, that the name isn’t yours until the beer is out in the marketplace.
Oasis, Texas Brewing hadn’t gotten the name Slow Ride trademarked by the time New Belgium, whose application for the Slow Ride trademark had been cleared after a two-month opposition period, reached out to Schleder in October 2014. But the small local brewery had one ace to use: another legal term called common-law rights. These come into play when a brewery hasn’t trademarked their beer names but nonetheless starts selling beers with those names.
“Probably the majority of the beer names out there are not federally registered as trademarks,” Tomasino said. “It’s fine as long as you realize that if someone else comes along and registers that same name in commerce, it doesn’t mean you have to stop using the mark. But it can limit you with what you can expand into geographically.”
After the initial tense phone call between Schleder and Jordan, relations between the two breweries grew increasingly hostile — to the point that New Belgium sued Oasis in a Texas court last year, claiming “exclusive nationwide rights to use the mark, with priority of rights over” Oasis, according to court documents.
The result of that lawsuit, which recently reached a settlement agreement, is that Oasis, Texas Brewing can continue to brew Slow Ride Pale Ale and sell it in all the places it was already found — the state of Texas — while New Belgium Brewing can continue to release the Slow Ride Session IPA in all other states. (Here, it’s being called the New Belgium Session IPA.) That’s a fair compromise to Schleder, who wishes trademark law wasn’t so ambiguous.
New Belgium is also OK with the outcome, noting in a statement that “we’re agreeing to Oasis’ use of the mark in Texas and we retain exclusive rights for the rest of the U.S. We’re comfortable with that.”
Schleder is just relieved Oasis — whose Slow Ride, “American muscle beer at its finest,” references a cool car, not a bike race — can finally look forward to other things, like growth and new beers.
“The lesson we’ve gained from this experience is that you have to trademark to protect yourself from the big guys,” he said. “You’ve got to make sure you’re iron-clad so you don’t spend a quarter of a million bucks in legal fees sorting out something that was yours in the first place.”