Can two different companies use the same trademark in the United States? FIELDWORK v. DECIDUOUS

Trademark law is intended to prevent unfair competition by giving a trademark owner the exclusive right to brand their products with a trademark. Traditionally a trademark is thought of as a word phrase or symbol, however just about anything that a producer uses to brand its products can be eligible for trademark protection.

Trademark law in the United States is a hybrid of federal law, state law and common law principles. The key to a trademark in the United States is the use of the trademark in commerce. Whomever brands products with a trademark first has priority to the trademark. The first person to use a trademark to brand goods is referred to as the senior user, subsequent users of a trademark are referred to as junior users. If a junior user brands products with a trademark in a way that is likely to lead to consumer confusion between products produced by junior user and senior user, that can be considered trademark infringement. A trademark can be registered in the United States to strengthen the rights associated with the trademark, however, registration is not a prerequisite to begin using a trademark and a senior user is still granted priority over a junior user.

An important reason to register a trademark is registration it creates nationwide constructive notice of registration. Under Section 7(c) of the Trademark Act, the date of filing a trademark application establishes a registrant’s date of “constructive use,” establishing nationwide priority except against a person who began use of the trademark prior to that date. Under common law, trademark rights within a certain territory are based on priority of use of a mark within that territory. This means that if an unregistered senior user was using a trademark in a certain state before a registered junior user, the junior user cannot claim the senior user is infringing on the trademark, within that state. So if certain circumstances occur, it is possible for two parties to have a claim to the same trademark in different geographic regions in the United States.

A case that involves similar trademarks in different geographic regions is FIELDWORK BREWING CO, v. DECIDUOUS BREWING CO., LLC, 4:19-cv-03191 (N.D.CA 2019). The plaintiff in this case is a craft brewery and eatery with taprooms located in the California cities of Berkeley, Monterey, Napa, Sacramento, San Mateo and San Ramon. The brewery was established in 2014. The plaintiff has registered the FIELDWORK word trademark, Registration No. 4871414, for goods and services in International Class 032 and U.S. Classes 045, 046 and 048 (namely: beer, ale, lagers, stouts and porters) on the Principal Register for the United States Patent and Trademark Office. The plaintiff first used first used FIELDWORK in connection with its brewery and beer products on or about February 11, 2015. The plaintiff’s trademark was registered in December 15, 2015.

The plaintiff uses its trademark at its breweries and pubs across California; on products distributed to taprooms, bars, and restaurants in the United States; on Fieldwork’s website; on social media accounts of all kinds; at craft beer festivals and events; on radio shows and podcasts; and in marketing and advertising materials between Fieldwork and its customers and vendors.

The defendant operates a brewery in Newmarket, New Hampshire. Geographically the plaintiff and defendant are on opposite sides of the United States. Several of the beer products sold by the defendant are branded the the trademark FIELDWORK. The defendant advertises its products on social media and sells its products at its brewery and at various craft beer events. Based on publicly available advertising the defendant first started using FIELDWORK to brand its products in early 2018.

The plaintiff learned of the defendant’s use of the FIELDWORK trademark in 2019. The plaintiff contacted the defendant demanded that the defendant stop using FIELDWORK to brand products. The defendant refused and the plaintiff filed a lawsuit for trademark infringement.

While it is possible for two companies in different geographic to use the same trademark, the facts are not in favor of the the defendant in this case. The plaintiff used the trademark in commerce first and registered the trademark with the United States Patent and Trademark Office before the defendant began using the trademark. It seems clear in this case that the plaintiff has priority over the defendant.

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