Sol Cocina .
Mycernary .
Absolute Threshold .
Out Front failed to .
What’s in a name? To avoid the cease-and-desist orders and lawsuits that led to big change for these Colorado companies and products, trademark experts say the work of choosing a name should include a healthy dose of research, a stack of trade registrations and a few thousand dollars invested in safeguards.
Businesses stepping on others’ trademark toes is an issue that crops up often at the Denver office of Faegre Baker Daniels, said Scott Bialecki, a partner and intellectual property attorney.
“Where I’ve seen them run afoul is when they check with the secretary of state and they check the domain name,” he said. “The problem is that those are not adequate checks to determine whether or not you can use the name or not.”
A knockout search with the U.S. Patent and Trademark Office should be the first step after choosing a name that is distinct, he said, noting brands such as Xerox for printers and Apple for computers.
“In a perfect world, if you’re starting, you want to be a company that has a distinct name for a variety of reasons,” he said.
Bernard Chao, director of the intellectual property certificate program at the University of Denver Sturm College of Law, said descriptive names can be troublesome for businesses.
“The more arbitrary the name, the stronger it is and easier it is to protect,” he said.
The comprehensive search includes searching registrations filed with the secretary of state. Business owners also should be mindful of phonetic equivalents when conducting the searches.
However, while there are advantages to filing for a federal trademark registration, there is not an obligation to do so, Bialecki said.
“Trademark rights accrue as you use them in a geographic area,” he said.
Companies can elect to file for a notice of “intent to use” a federal trademark registration.
There’s a temptation for business owners to save on costs by searching and registering for trademarks on their own, but Bialecki recommends hiring legal help.
“It’s something that’s often overlooked, but it’s well worth the money,” he said.
If a dispute does escalate to federal court, those actions can be costly.
“It’s just like any sort of litigation; if you’re faced with a larger company and you don’t have the resources to fight, it’s difficult,” he said. “It might be easier to rebrand than to try to seek justice through the court system.”
That was the solution for Leia and Andy Mayer, the owners of Denver coffee shop Sol Kitchen who were sued by the operator of Sol Cocina.
The Mayers quickly renamed their business Bridge Span 14, a name they had used in Florida.
“It made sense to use our previous name since we had already been using it in commerce for three years and never had any issues,” Leia Mayer said. “Plus, it was nice to put the other name issues far behind us and get back to focusing on things we love.”
Others feared they would not be able to bear the weight of litigation.
Denver’s Q Publishing filed a lawsuit against former CBS subsidiary CBS Outdoor after the billboard maker adopted the name Outfront Media.
Q Publishing runs Out Front magazine, a publication that has served the gay, lesbian, bisexual and transgender community in Colorado and beyond for 40 years.
When the Outfront name — and a similar-looking logo — popped up on billboards in Colorado, Q Publishing started receiving queries and checks for Outfront.
Q Publishing filed suit, and its owner hoped the small outfit could hang on until a jury trial. Attorneys for Q Publishing claimed that the deeper-pocketed Outfront was trying to drown its opponent in legal motions, requests for lengthy depositions and requests to review hard drives.
Last month, Q Publishing moved to dismiss the case with prejudice.
Q Publishing owner Jerry Cunningham declined to comment on the outcome. Carly Zipp, a spokeswoman for Outfront Media, said the details of the settlement were confidential and no money changed hands.
Outfront Media’s name continues to appear on billboards in Denver, but the company’s Facebook page now has the word “USA” following its name. Out Front’s Facebook page has been renamed “Out Front Colorado,” and the logo includes a slightly bigger gap between “Out” and “Front.”
Longmont’s , which itself with an tries to resolve issues with a quick phone call and conversation, said Sarah Watson, marketing director for the brewery.
“The litigation really benefits the attorneys in the end,” she said. “It’s really hard on both the companies.”
And in the increasingly crowded craft brewing industry — which tallied 4,225 breweries at the end of 2015 — it’s no longer a simple task to craft a name for a beer.
Left Hand has a running list of about 400 names. When it’s time to release a new beer, the marketing team digs into the name bank and starts the process with a basic Google search.
They broaden the simple internet sleuthing to industry review websites such as and .
They then narrow the significantly slimmer list — of about 10 at this point — to their three favorites and conduct searches on the .
“If we don’t find it there, then we also try similar names, names that sound the same, names that seem similar,” Watson said. “Then we do ask our attorneys to search themselves.”
The final steps include conducting searches through ShipCompliant’s LabelVision program, which searches federally approved labels and monitors intellectual property, and then filing paperwork for a trademark application.
“It is a painstaking process; it is difficult to find names,” Watson said. “It’s amazing. You think of a name and say, ‘Oh wow, that’s so creative, interesting and different. There’s no way anybody has that name.’ “
Ultimately, somebody does.
Plenty of brewers have butted heads in recent years, and many cease-and-desist orders have been sent. But a lot of cases are resolved amicably, she said.
“As the owner of trademarks, it’s your responsibility to protect them by keeping an eye on activity in the market and trying to resolve any disputes that may cause consumer confusion,” she said. “The majority of time, the intent by that brewer is typically not malicious. Usually, they just don’t understand trademark law.”
Alicia Wallace: 303-954-1939, awallace@denverpost.com or @aliciawallace
