Thursday, May 7, 2009

Hey... what about free speech? KC Beer, Part II

We received a couple of responses to yesterday's blog about naming a beer after a city (even though the beer isn't made in that city). One of the comments, from our friends at property,intangible raises an interesting point and we'd like to answer it while the topic remains close to everyone's cerebral cortex. Dear Rich! You only talked about registration. What about use? Isn't it my first amendment right to use any darn name I please? Absolutely. The Dear Rich staff loves free speech. In fact, if it weren't for the two-page indemnity provision we signed in order to write this blog, we might actually exhibit some free speech here. Err... back to your comment... Yes, you are free to use a geographically misdescriptive mark. Along with that freedom comes a few limitations. As noted, you can't register the mark -- which means you can't claim any of the benefits of federal registration on the principal register, including constructive notice of nationwide priority and a presumption of validity. And federal registration extends the owners remedies to any goods or services with which the mark is likely to cause confusion. (Kansas City Beer Nuts, anyone?) You also will have trouble stopping an imitator since a court is unlikely to enforce a geographically misdescriptive mark. And if you want to sell your beer company, your intangible property may be difficult to valuate (and even more difficult to transfer... speaking of indemnity provisions). So if you're on an L-7 business trajectory, the inability to deliver that little 'R' in the circle-bug could put a damper on your dreams. Nevertheless, if you're looking for a temporal statement -- you're only going to be selling a limited stock and you're not concerned about chasing others -- yes, your geographically misdescriptive mark awaits you.