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 While this is a non-precedential case, it does reflect fairly well-settled law concerning surnames and similarity between marks and is worth reviewing for members of an industry where surname trademarks are prevalent.  Essentially, the Board found that “BARTON” was the dominant portion of the mark BARTON FAMILY WINES as “BARTON” is the first term in the mark and the terms “FAMILY WINERY” are merely descriptive of applicant’s business operations.  In comparing this to THOMAS BARTON, the Board held that consumers would view BARTON FAMILY WINES as a line extension from THOMAS BARTON of wines only bearing the BARTON surname.  Thus, the Board held the marks to be similar and given the identical nature of the goods found there to be a likelihood of consumer confusion.

What is perhaps more interesting about this case is that there are apparently six other third-party registrations for “BARTON” marks for alcohol beverages. This usually suggests that a term is weak and not entitled to much protection.  However, the Board discounted these registrations on the basis that there was no evidence of whether these other marks were even used as four of the registrations were not based on use of the mark in commerce and for the two registrations that were based on use, there was no proof of use entered in the record.  It is also notable that the two “BARTON” registrations that were based on use were for trademarks for whiskey.  While the Board did not expressly state that the marks for whiskey were discounted because the marks in dispute were for wine, this seems to have impacted the Board’s view on the matter.  Hindsight is always 20/20, but if the applicant had perhaps put in evidence of third-party use of the term “BARTON” on wine, there may have been a different result as there may have been a different conclusion by the Board as to the strength of the term “BARTON” in the likelihood of confusion analysis.  A search of the COLA database using the ShipCompliant Label Vision program discloses several “BARTON” marks for wine including BARTON & GUESTIER, CHATEAU LEOVILLE BARTON, CHATEAU LANGOA BARTON, CHATEAU MAUVESIN BARTON and LA CROIX BARTON.

However, even with this additional evidence, the applicant still may not have prevailed given the fact that its mark is essentially BARTON and the only other points of distinction are descriptive terms.  Had applicant’s mark been JAMES BARTON or JONES & BARTON, it may never have even been initially refused by the trademark examiner, and this is perhaps the best take away from this case.  If you are the first to register a surname by itself, e.g., SBRAGIA, the USPTO will likely refuse registration to second-comers that include that surname as part of their mark.  If you are a second-comer and a surname is already registered as part of composite trademark, e.g., THOMAS BARTON, you will be unlikely to obtain registration of the surname by itself or in combination with other descriptive terms and your better course of action would be to adopt a distinctive composite if you want to register the surname, e.g., JAMES BARTON.  These are important considerations when deciding what mark to adopt.

Another interesting side note: the Board repeatedly referred to the “distillation” of wine at a winery facility.  Honest mistake given the range of industries with which the USPTO interacts, but entertaining nonetheless.