Earlier this month, Fate Brewing Company announced that they were changing their name to McFate Brewing Company.
Wait…what?! Is this awesome local brewery turning itself into some type of fast food brewery?
No, but they ran into a legal snag that forced the name change.
In 2012, Fate Brewing Company opened in Arizona. In 2013, someone else opened Fate Brewing Company in Boulder, Colorado. In legalese, the Fate Arizona is called the “senior user” of the name since they opened first and the Fate Colorado is the “junior user.” Despite being the junior user, Fate Colorado sued Fate Arizona for trademark infringement.
How Is This Allowed?
Easy: Fate Colorado registered the trademark “Fate Brewing Company” with the U.S. Patent and Trademark Office (USPTO). It’s the Burger King situation all over again.
By doing business first, Fate Arizona had rights to use “Fate Brewing Company” for beer and restaurant services, but since they didn’t register their trademark with the USPTO, their rights only extended to the geographic area where they did business. When Fate Colorado got their registered trademark, they obtained the exclusive right to use “Fate Brewing Company” for beer and restaurant services everywhere in the U.S. except where Fate Arizona had an established market. Likewise, Fate Arizona couldn’t expand its market beyond its established boundaries without infringing Fate Colorado’s rights.
I suspect Fate Colorado sued Fate Arizona for trademark infringement in part because their trademark was granted in 2013 and Fate Arizona South opened in 2015. Fate Colorado could have interpreted the new location as a market expansion that violated their trademark rights.
What’s Next for Fate Arizona?
Even though Fate Arizona could have made a legal argument that they had the right to use the name as the “senior user,” they have opted to take the high road to rebrand rather than spend hundreds of hours and thousands of dollars on this legal fight. The re-branding party for McFate Brewing Company (named after the owner, Steve McFate) is scheduled for June 25, 2016 according to Fate Arizona’s Facebook page.
I hope Fate Colorado wasn’t a jerk about this process. A company has an obligation to protect its intellectual property or risk losing it, but there is more than one way to pen a cease and desist letter.
How Could Fate Arizona have Avoided This Problem?
Yes. Fate Arizona could have beaten Fate Colorado to the USPTO and filed a trademark application before they did. They could have staked their claim to the name and gained exclusive right to use the name nationwide, shutting down Fate Colorado or forcing them to rebrand from their start.
Many new businesses are more concerned about getting off the ground than federal trademark filings, especially when the business only has aspirations of being a local brand. Unfortunately, this leaves them vulnerable to being boxed in geographically, called into court, or forced to rebrand like it did here.
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