If a beer brewery has already trademarked the name barrelhouse, and I own a liquor distribution company, for wine and spirits, that I wanted to trademark as barrelhouse selections would this pass?
Currently, there are 21 barrelhouse Trademarks, 9 of them dead, 13 alive. Among them the following:
- OLE SMOKY BARRELHOUSE RESERVE - for liquor but not beer.
- THE BIG EASY BARRELHOUSE & BOTTLESHOP - Bar services
- BARRELHOUSE STANDARD ALE - beer
- BEST OF HANDS BREWERY & BARRELHOUSE PROUDLY ESTD. 2017 WEST SEATTLE WA - Bar services & Beer
- THE BARRELHOUSE - Retail store & Whiskey tastings
- BHBC / BARRELHOUSE BREWING CO - Beer
- UNION BARRELHOUSE - Bar services
- BARRELHOUSE - Wine
- SHELLERS BARRELHOUSE BAR - Restaurant & Bar service
A common thing among these is, that they add a distinguishing feature to the mere descriptive word Barrelhouse, reducing the likelihood of confusion. Because that is the standard upon which the trademark lawsuit is to be decided.
As a result, it might be best to name your brand something like "[name/location] Barrelhouse" which is fully descriptive - who's the owner or where is it. However, a place like "Bob's Garage" can't trademark its business as that's too generic. "Bob's Chicago Downtown Garage" might be trademarkable. In any case, you should consult a trademark lawyer how much you need to get a trademark and not infringe on others.
Beer and liquor are not entirely unconnected businesses -- both involve alcoholic beverages. On the other hand "barrelhouse" might be considered as a descriptive name. In general descriptive names get less protection. This is a grey area, and you would be wise to get legal advice, or pick a different name. Also, is the brewery in the same general geographic area / market area as you?
A key question would be: could a reasonable but somewhat careless customer or potential customer be confused into thinking that there is some affiliation or association between the two businesses? If the answer is yes, trademark infringement is quite likely to be occurring if both marks are used.
Trade mark laws are different in different countries. In some countries all trademarks must be registered. In others, including the US, simple use can confer protection with no registration.
Given that this is ijn the US according to the comment, this is still in a gray area. The other mark being registered makes it stronger, but being descriptive makes it weaker. The geographical distance will help, but if the market areas are the same or have significant overlap, so that some of the same people will be likely potential customers foe both businesses, that will hurt the new business's case, and make it more likely to be held an infringer.
I would still suggest consulting a trademark lawyer on the specific issue.