Articles by: Scott Gerien

Consumer Deception and Geographic Brand Names – KONA BREWING CO.

In the past few years the alcohol beverage industry has seen numerous consumer protection lawsuits centered around allegedly deceptive advertising statements on alcohol beverage brands, such as “Handcrafted” for Tito’s vodka.  We previously blogged about this in the context of safe harbor defenses to such claims based on COLA approval. We may be seeing a […]

Brexit! What happens to my EU Trademark Registration?

As of this writing, CNN is reporting that there is no possibility that the “remain” proponents will prevail in UK’s Brexit vote. By now we all know that “Brexit” refers to Britain’s vote to exit membership in the EU. And now it appears the Brexit will occur. In a February 2016 report, Wine Institute United […]

Clock is Ticking for Trademark Owners for .wine Generic Top-Level Domain

As we’ve previously reported, the Internet Corporation for Assigned Names and Numbers (ICANN) has been selling hundreds of generic top-level domains (gTLDs)  to domain name registries for $185,000 each.  These registries then authorize domain name registrars to sell domain names to the public under the gTLDs that the registries have purchased.  The registry called Donuts […]

<.wine> gTLD on the Horizon; Protect your Brand Name

In 2013, the Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit organization responsible for managing the Internet’s domain identifiers, began rolling out new generic top-level domains (“gTLDs”).  The most popular gTLD is <.com>. Specific domain names are registered under a specific gTLD, e.g., <gallo.com>. However, ICANN believed that in time the <.com> gTLD […]

Trademark for Wine vs. Vodka: Court Issues Preliminary Injunction

On March 9, 2015, the U.S. District Court for the Central District of California issued a preliminary injunction to White Oak Vineyards & Winery, LLC against White Oak Spirits LLC enjoining the spirits producer from use of the term WHITE OAK on vodka based on likelihood of consumer confusion with the mark WHITE OAK for […]

USPTO Recognizes Exclusivity in Surname Trademark for Wine

On November 7, 2014, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office issued an opinion upholding the refusal to register the trademark BARTON FAMILY WINERY for wine based on a prior trademark registration for THOMAS BARTON, also for wine.  A copy of the opinion may be found here. While this is […]

DP&F’s Operations Update

Like many of our clients, DP&F’s Napa offices were damaged during Sunday’s earthquake. Although our attorneys now have full access to email and voice-mail, the best way to reach our non-attorneys is still over the phone. To contact us, please send your attorney an email or call 707.524.7000, and we’ll put you in touch with […]

Why Would Wine Industry Support .wine TLD?

On Saturday, June 21, 2014, the 50th session of ICANN meetings opened up in London.  ICANN, the Internet Corporation for Assigned Names and Numbers, is the non-profit organization that coordinates the Internet’s global domain system.  One of the issues addressed at the London meetings was the ongoing issue of the new Top Level Domains (TLDs) for […]

Water = Wine? Joel Gott Wines Defeats GOTT LIGHT Trademark for Water

On June 26, 2013, the Trademark Trial and Appeals Board (“TTAB”) of the U.S. Patent and Trademark Office (“USPTO”) sustained the opposition filed by Joel Gott Wines (“JGW”) against the trademark application for GOTT LIGHT and Design for water based on JGW’s prior registrations for GOTT and JOEL GOTT for wine. A copy of the […]

Chateauneuf-du-Pape Syndicat Denied by USPTO in Attempt to Protect Appellation

Like a bottle of Chateauneuf-du-Pape I’m fine like wine when I start to rap We need body rockin’, not perfection Let me get some action from the back section   ~ “Body Movin’” by The Beastie Boys   The Beastie Boys cannot be pleased and there undoubtedly will be no body rockin’ at the Syndicat Des […]

Is a COLA necessary to Establish Lawful Use of a Wine Trademark?

In the United States, trademark rights may be established through the lawful use of a mark in association with goods in commerce.  When one is selling a product that is not subject to government regulation, such as t-shirts, it is fairly simple to make lawful use of a mark in commerce; you label the t-shirt […]

Is Your Brand Safe in Asia?

China is the new darling of luxury good exports, including wine.  However, many wineries fail to fully consider the need to protect their trademark in China prior to doing business there.  Not only is counterfeiting a problem in China, but so is trademark squatting where Chinese nationals pre-emptively register foreign company trademarks.  Scott Gerien, the […]

California ABC Reverses Position on Third-Party Providers Following Industry Input

The California Department of Alcohol Beverage Control has reevaluated and reversed its position on third-party providers conducting marketing of alcohol beverage products over the Internet, as well as the propriety of licensing a trademark for use on alcohol beverage products without being a producer with an ABC license. This has come after a stakeholder committee, which was formed […]

Stopping Gray Market Wine Imports

On October 1, 2011, Scott Gerien, head of Dickenson, Peatman & Fogarty’s intellectual property practice group made a presentation at the annual meeting of the International Wine Law Association in Logrono, Spain on the issue of stopping gray market wine imports in the U.S.  The ability to prevent gray market imports, especially as to wine, […]

European Court of Justice Recognizes Superiority of Cognac Geographical Indication

On July 14, 2011, Bastille Day, the European Court of Justice (ECJ) recognized the superiority of the geographical indication (GI) “COGNAC” for spirits in Finland over a trademark application encompassing the term “KONJAKKI” for a generic reference to brandy not meeting the standard for the use of “COGNAC” as set forth by the Bureau National […]

"SKINNY" Brands are Where It’s At

In our monthly review of trademark applications at the U.S. Patent and Trademark Office (USPTO), it appears the latest trend in alcohol beverage products is “SKINNY” brands.  In the month of May 2011, there were six different trademark applications filed for marks for alcohol beverage products encompassing the term “SKINNY.”  These included the marks SKINNILICIOUS […]

USPTO Finds Wine and Tequila Related, Grants Opposition to Trademark Application for GRAN SOL

On May 17th, the Trademark Trial and Appeals Board (the “Board”) of the U.S. Patent and Trademark Office (the “USPTO”) granted an opposition filed by Miguel Torres, S.A. against a trademark application for GRAN SOL and Design for Tequila (as shown below) based on the prior registration of the trademark GRAN VIÑA SOL for wine […]

Wine Trademarks: Rights Can Only be Established by "Lawful" Use

One of the basic tenets of U.S. trademark law is that trademark rights may only be established upon use of a trademark in commerce.  Whether the rights are established at common law, or whether a federal trademark application has been filed based on current use or intended use, trademark rights cannot attach until the trademark […]

Brand Trends for Wine Revealed in Trademark Filings

Brand trends in an industry, or at least branding plans for a particular player in an industry, can often be seen before they actually debut in the market by watching trademark filings.  Under U.S. Trademark Law, a brand name, or trademark, can be protected before the brand name is ever used in the marketplace.  This […]

Refusal of Trademark UPSLOPE for Beer Upheld by USPTO Based on Prior Trademark for UPSLOPE for Wine

Consistent with earlier precedent, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) upheld the Office’s refusal to register the trademark UPSLOPE for beer based on a prior registration for UPSLOPE for wine.  In considering the likelihood of confusion between trademarks, the TTAB limits the analysis to the trademarks as shown in […]