Weighing the Costs of Fighting a Trademark Matter & Changing Your Mark

I came across this article from the Minneapolis/St. Paul Business Journal’s Clare Kennedy earlier this week regarding Minnesota craft brewer 612Brew‘s recent trademark issue with the Motion Picture Association of America.

According to the article, 612Brew renamed its “Rated R” Rye IPA to “Unrated” after the brewery received a cease and desist letter from the Motion Picture Association of America.   This appears to be a case where it really does not matter if the brewery is right, the cost to fight will far outweigh the costs to settle and change the name of their beer.

Now, I do not have access or any knowledge of the communications between 612Brew or the MPAA, but it can be instructive to look at the trademark applications filed by 612Brew and the trademark registrations of the MPAA.

612Brew filed its trademark application for Rated R with the U.S. Patent & Trademark Office on June 2, 2014.  The application covered international class 032, beer. Simple, clear, application. The application was abandoned on June 27th, 2014. It is rather incredible that the MPAA became aware of the application, issued a demand letter, and after some discussions, the applicant had withdrawn its application all over a period of less than one month.

The MPAA, so far as I know, does not make beer. or wine. or whiskey.  It does, however, has owned a registration for the word mark “Rated R” in connection with “Entertainment Services Rendered Through the Medium of Motion Pictures.” It first used the mark in commerce in March 1970 and obtained registration of the trademark in April 1987. The MPAA does not own a trademark for the term “Unrated”

So, if we are comparing a trademark application in the international class for beer and another in entertainment services, I would likely conclude that there is a low risk to the brewery that there will be an issue with the application – based solely on the above information.  I, and most all trademark practitioners, do advise clients that even if the risk is remote, it still exists. While a trademark attorney can advise that a client should conduct a third-party trademark search, along with comprehensive internet and USPTO searches, there is a great deal of gray area in the trademark space. It can be frustrating to clients. It appears here that the matter settled quickly based on a number of factors that included timing, costs, and the availability of suitable alternative.