Protecting Wine Brands in Central America, South America and the Caribbean

The growth of trademark applications in Latin America continue to climb.  Recently, we have noticed an increase in Latin America trademark filings for wine brands that are identical or confusingly similar to our client’s U.S. brands.  These have NOT been instances of brand hijacking. These are cases where the identical or similar brand has sought trademark registration in a Latin American country, thus potentially preempting a U.S. winery from using the same or similar wine brand.  It will cost significantly less to register your brand now while it may still be available than to attempt to wrest it back in the future.  Moreover, seeking registration now  protects against the risk of being prevented from entering that market with your U.S. brand down the road.

 

Latin America is a growing region.  Applications in the region have grown 14.9% from 2010 to 2014 according to “Trademarks and Patents” Marcasur.  The increase in the number of applications was most pronounced in Chile (27.4%), the Dominican Republic (22.1%), Mexico (10.9%) Guatemala (8.4%), Colombia (7.5%) Argentina (4.9%) and Costa Rica (2.2%).  Id.  In 2014, nationally filed trademark applications, outnumbered foreign applications with 67.2% of all applications.  Id. 

 

Almost 3 million trademark applications were filed between 2010-2014.  At the top of the list, with the greatest number of applications were Brazil, Mexico, Colombia and Argentina, the countries with the highest population growth rates.  Id.

 

The average time for granting a trademark without opposition in Latin America in 2014 ranges from 3 months in the Dominican Republic to 36 months in Brazil.  The average for all trademark applications filed in the region is 9.2 months (compared to 10.5 months in the United States).  Id.

 

If you would like more information about registering your brands in Mexico, Dominican Republic, Panama, Guatemala, Colombia, Argentina, Costa Rica, Peru, Paraguay, Uruguay, Nicaragua, Bolivia, Brazil, El Salvador, Honduras, Ecuador and Venezuela, we have personally met with legal counsel in each of these countries and have developed a working relationship with them in order to help our clients protect their brands in Latin America.

 

For additional information or any other questions contact Katja Loeffelholz at her email.  Katja recently attended the International Trademark Association (INTA) leadership meeting held in Panama City, Panama.  INTA is the global association of trademark owners and professionals dedicated to protecting trademarks and related intellectual property. 

Trademark Protection for Vineyard Brands

The June 2014 issue of Practical Winery & Vineyard features an article by DP&F’s Katja Loeffelholz titled “Branding Agricultural Commodities.”  The articles provides growers with a detailed summary of the importance of protecting their vineyard’s brand.

You can access the article by clicking on the image below.

2014-06 Loeffelholz PWM Vineyard Brand Article

For more information on how you can secure trademark rights, please contact Katja Loeffelholz at kl@dpf-law.com.

Trends in Wine Package Design

Practical Winery & Vineyard recently published an article written by Dickenson, Peatman & Fogarty attorney Katja Loeffelholz. Katja’s article “What’s trending, how to capture it” discusses how technological advancements have permitted an evolution in wine labels, bottle shapes, closures and packaging designs.

One wine bottle can contain several protectable elements. Word mark, logos/images, taglines/slogans, color, configurations, label design, trade dress, product features and design patents are all protectable elements of wine packaging. Protecting these different element can build brand equity.

PWV Feb 2014

Katja is a registered attorney with the United States Patent and Trademark Office.

To learn more about protecting all aspects of intellectual property in your wine label and packaging please contact Katja Loeffelholz at kl@dpf-law.com.

Branding Strategies in Agricultural Commodities: Vineyard & Block Designates

By Katja Loeffelholz, Dickenson, Peatman & Fogarty

The prominence of vineyard-designated wines is another lesson in value-added agricultural branding which presents both the winery and the vineyard owner or lessee with a number of marketing and legal issues. Recognizing the value of vineyard designated names, vineyards have long been designating blocks within their vineyards with proprietary names.

In this way, even though multiple wineries are purchasing grapes from the same vineyard property, each winery can have a distinct name to refer to the vineyard block where the grapes were grown, also known as the “block designate.” If a vineyard owner sells wine grapes to a winery under a vineyard designate or block designate, the winery may use that vineyard or block name on wine produced from those grapes to designate origin so long as such use complies with the vineyard designation labeling requirements of the Alcohol and Tobacco Tax and Trade Bureau (TTB). Accordingly, the vineyard owner — not the winery – theoretically owns rights in the name.

MondaviToKalon

Wineries may consequently find their vineyard-designated wines embroiled in a trademark dispute between different winery owners. One of the most well-publicized vineyard name trademark disputes involved the famed To Kalon Vineyard. Originally planted in 1868, To Kalon was eventually divided up and by the 1990s, both the Robert Mondavi Winery and Andy Beckstoffer owned portions of the vineyard. Mondavi secured federal trademark registrations for both the TO KALON and TO KALON VINEYARD marks. Schrader Cellars had entered into an agreement to purchase grapes from Beckstoffer, and Schrader planned to use the “Beckstoffer Original To Kalon Vineyard” designation on its wine label. In 2002, Mondavi sued Schrader Cellars, and sought an injunction to bar Schrader’s sale of “To Kalon Vineyard” designated wine. The parties eventually settled their dispute, and Beckstoffer was granted a royalty free license to continue to use the To Kalon name.

Thus, when the vineyard is owned by another party, the risk to the winery in marketing vineyard and block designated wines made from contract grapes is that once the contract ends, so can the rights to continue use of the vineyard and/or block designation. A winery must accept that by producing and marketing vineyard-designated wine made from grapes grown in a vineyard that the winery does not own, the winery is potentially spending time and money building brand equity for someone else. When the grape contract ends, there is considerable risk that the “brand” of the vineyard owner may be used by the vineyard owner itself, or potentially by other wineries that contract with the vineyard owner.

Wineries are often unaware that the vineyard designation or block designation actually belongs to the vineyard owner. Many wineries feel that if they are using the vineyard designation on wine and popularizing the vineyard name, they should own the rights in the vineyard or block designate as a trademark. While this may be a questionable legal position, this attitude among some wineries may nevertheless be problematic from a practical perspective. Should a winery successfully register rights in a mark which is used as a vineyard or block designate, the vineyard owner will need to spend considerable time and money in a potentially unsuccessful effort to regain clear rights in the name. The best way a vineyard owner can protect itself is to register its brands and properly license them to a winery.

To maintain trademark rights, an owner must control the quality of goods sold under the mark. For a vineyard owner, this can be accomplished through specific provisions in a grape contract or through a related trademark license agreement which is separate from the grape contract. A license will clearly establish that, as between the vineyard and the winery, the vineyard is the owner of the mark and that the winery (and its use of the designate) is subject to the terms of the license, as well as, the vineyard owner’s control of the quality of wine provided under the mark. In practice, such quality control can often be administered in a non-disruptive, nonintrusive manner (e.g., sufficient quality may be presumed based on maintenance of quality heretofore maintained by the winery operation).

The strategy of enhancing the value of grapes by naming the grapes from a certain vineyard is also widely used to enhance the value of other agricultural commodities, such as cattle from a certain ranch, or spinach from a particular farm. As the commodity producer, it is important to register the trademarks for the brands used with these agricultural products so that the commodities themselves (as well as the land from which they come) can accrue value, prestige and reputation which inures to the brand assets.

Are you adequately protecting your vineyard designate or agricultural commodity?

For inquiries, please contact Katja Loeffelholz, a registered attorney with the United States Patent and Trademark Office and Of Counsel to Dickenson, Peatman & Fogarty at kl@dpf-law.com.

Stella Rosa Trumpets Pyrrhic Trade Dress “Victory” Over Constellation

Plaintiff San Antonio Winery, Inc. (“SAW”) filed suit against Constellation Brands last August in the Central District of California, alleging trademark infringement, false designation of origin, and unfair competition due to Constellation’s promotion and sale of fizzy, low-alcohol, sweet (“FLAS”) red wine under the mark ROSATELLO.

SAW claims trademark rights in the mark STELLA ROSA and its “Stella Rosa Crown” design mark (U.S. Trademark Reg. Nos. 4,000,471 and 3,663,013, respectively) and use of the mark allegedly going back to 2004. In October 2013, subsequent to SAW’s filing, Constellation changed the design of its “Rosatello” labels, but otherwise kept the name in use.

Then in November, SAW filed a motion for preliminary injunction to prevent sales of ROSATELLO in connection with FLAS wine, which was heard by the court in late January. The court’s orders came down on March 11, 2013 – one order denying the injunction with respect to Constellation’s use of the trademark ROSATELLO on its newly modified packaging, and another order granting an injunction – but only as it relates to Constellation’s prior packaging, which is no longer in use.

THROWING THE MUD

In its moving papers, SAW claimed that Constellation copied its product line, transposed the STELLA ROSA trademark, and copied the packaging in a bad-faith scheme to “steal” its market share, resulting in actual confusion to consumers and retailers. Evidence of confusion consisted of Instagram posts, as well as statements from a wine store owner, a manager and wine purchaser personnel. SAW also cited in-store displays allegedly showing Rosatello product stocked on shelf space marked for Stella Rosa, and Stella Rosa product displayed atop a case of Rosatello.

SAW alleged that Constellation’s marketing confused retailers into believing that Stella Rosa had become one of the Constellation brands, damaging its image as a 100-year-old family-owned winery operation.

SAW provided “line-up” survey evidence which allegedly shows that 52% of respondents showed some confusion (over 50% confusion is considered “persuasive evidence”), based in part upon similarities in font, the crown logo adorning the capsule, the bottle shape and label design (including the word “Rosa” in red type with a similarly stylized “R”).

WHAT DO YOU MEAN: NO TRADEMARK INFRINGEMENT?

To obtain a preliminary injunction is usually a tall order. In this case, while the discontinued packaging was found problematic, the ROSATELLO trademark was not enough, by itself, to warrant an injunction from the court.

The court noted several key points in its denial of the trademark injunction. For example, when SAW applied to register the STELLA ROSA mark, it was refused on the basis of prior registrations for STELLA BELLA and BUONA STELLA, and SAW overcame such refusals by arguing that its mark was distinctly different from those other marks, as well as the mark STELLA, and hence unlikely to cause confusion. (Yes, what you say to the USPTO can and eventually will be used against you. –ed.)

In its motion, SAW relied on its considerable advertising expenditures (approximately $3.5 million) and commercial success (sales over $100 million in the last decade) of Stella Rosa to demonstrate how the strength of its mark increased over time, from what was originally considered a weak mark at the time of registration.

While the court found similarities with STELLA ROSA in the color scheme, label location and font of the prior ROSATELLO packaging, the new packaging was found to differ in all of those respects. Interestingly, despite survey evidence which showed that 37.6% of the respondents mentioned something about the name being similar, the court found that this did not support the position that the names STELLA ROSA and ROSATELLO are similar to one another, or that use of the names alone will independently confuse consumers, since the names did not appear in isolation from the packaging in SAW’s survey. (This is an important lesson in survey methodology.) The court noted that, while they bear some auditory resemblance to one another, the two marks begin and end with different sounds, and do not share any meaning – and that SAW provided no evidence that the current versions of the respective products are similar enough to confuse consumers.

The survey evidence and accounts from both retailers and consumers were found by the court to be unsupportive of the likelihood of confusion, since Constellation had already discontinued use of its prior ROSATELLO label.

SPIN CITY: WHAT’S REALLY GOING ON HERE?

Some wine writers — and even SAW’s own legal counsel in the matter — would have you believe that this represents a key victory for SAW over the “global giant” Constellation, but in reality this is hardly the case. The press release by SAW’s counsel states: “[T]he court entered an order on March 11th preliminarily enjoining Constellation’s use of the complained-of labels,” (emphasis added) but only the prior label was enjoined. In reality, the injunction is strictly limited to the older ROSATELLO product label, and only in connection with FLAS wine – Constellation’s use of ROSATELLO in connection with sparkling wines and other offerings has not been challenged by SAW’s suit.

In fact, Constellation’s ROSATELLO has not perceptibly skipped a beat, as sales continue under a slightly modified label and trade dress. Perhaps more importantly, this ruling by the court is potentially somewhat of a setback in SAW’s overall enforcement of the trademark STELLA ROSA, for which the injunction was clearly denied — creating an uphill battle for SAW on the trademark infringement claim, and effectively establishing the rather narrow scope of legal protection likely to be afforded to the STELLA ROSA mark going forward.
Below is a side-by-side comparison of the STELLA ROSA alongside both the old and new ROSATELLO bottles. Are consumers really likely to be confused?

RosatelloStellaRosa

For trademark protection and enforcement inquiries, please contact Chris Passarelli, Senior Intellectual Property Counsel at Dickenson, Peatman & Fogarty, at: cpassarelli@dpf-law.com.

Never the Dark Horse, Gallo Goes on Trademark Attack

On February 25, 2014, E. & J. Gallo filed a trademark suit in the Southern District of New York against Dark Horse Distillery, LLC. of Lenexa, Kansas, and T. Edward wines, Ltd., its New York distributor, claiming infringement by false designation of origin, unfair competition and trademark dilution of its registered mark DARK HORSE for which Gallo claims first use (through its predecessor in interest) in connection with wine as of 2004, as well as sales of spirits (specifically, vodka) under the same mark since 2011 (E. & J. Gallo Winery v. Dark Horse Distillery, LLC. And T. Edwards Wines, Ltd., Case No. 14-CV-1231).

The Complaint (available here) alleges that when Gallo learned of the defendant distillery’s plans to introduce its whiskey under the name DARK HORSE in 2011, it repeatedly warned the distillery that its conduct would confuse consumers, and alleges that Dark Horse Distillery has since actually admitted that consumers are actually confused by its sale of DARK HORSE Distillery Reunion Rye Whiskey and its Reserve Bourbon Whiskey under the DARK HORSE brand. If proven true, this alleged “actual confusion” could be the best evidence in favor of Gallo in the analysis of the likelihood of confusion to determine whether there is infringement of Gallo’s marks.

The Complaint also alleges that, upon learning of Gallo’s asserted rights to the mark DARK HORSE, the defendant “in defiance of Gallo’s senior rights” filed no less than six (6) trademark applications for registration of marks containing the words DARK HORSE in connection with distilled spirits, including bourbon and rye whiskey.

Wine and distilled spirits have been found to be “related goods” for purposes of analyzing the likelihood of confusion in other cases. However, any distinction here would not seem to matter all that much because Gallo allegedly sells both wine and spirits under the mark DARK HORSE. The Complaint also alleges that the defendant distillery in fact sells its spirits through a wine distributor and “encourage[es] consumers to mix its spirits with wine” (Do folks really mix the two? I am fascinated and need to meet these people. –ed.)

Gallo’s counsel also appears to employ some level of comedic license, as the Complaint defines the relevant consumers as “purchasers of value-priced alcoholic beverages” who “cannot easily distinguish between the two DARK HORSE brands that appear to be the same” and that the defendant distillery “appears eager to take advantage of them.” Kidding aside, there may be some risk that, if found liable, defendants will be found to have infringed willfully – subsequent to and in disregard of actual notice by Gallo of its registered rights. In exceptional cases, treble damages and sometimes a prevailing party’s attorneys’ fees can be awarded in instances of willful infringement.

At the moment, the field conditions seem to favor Gallo, who appears as front-runner, favored to win. However, we will just have to wait and see if defendants can stay true to the moniker and somehow pull out an unexpected victory.

Comparing Apples and Grapes; Not the Same for Trademarks

In most all cases that come before the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) involving relatedness of wine and other beverages, both alcoholic and non-alcoholic alike, the Board almost always finds the goods to be related for purposes of its likelihood of confusion analysis.  A likelihood of confusion analysis involves analysis of several factors, any one of which can be determinative to the outcome of the case.  Usually a finding that the marks are similar goes a long way in demonstrating a likelihood of confusion.

 

Domaine Pinnacle, Inc. (“Domaine” or “Applicant”) is a family-owned orchard and cidery located in Quebec, Canada.  Domaine applied to register the mark DOMAINE PINNACLE & Design for “apple juices and “apple based non-alcoholic beverages.”   The word “domaine” was disclaimed.

 

 

Franciscan Vineyards, Inc. (“Franciscan” or “Opposer”) a wholly-owned subsidiary of Constellation Brands Inc., an international wine company and U.S. beer importer, opposed the registration of Domaine’s mark on the grounds of priority of use and likelihood of confusion with its marks PINNACLES and PINNACLE RANCHES covering wines. 

 

 

In the first step of the analysis, the Board considered the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.  While acknowledging the difference in wording and the presence of a design element in Domaine’s mark, the Board found the term PINNACLE to be the dominant element in the mark and found the parties’ marks are “similar in appearance, sound, connotation and commercial impression.”   Thus, the similarity of the marks weighed in favor of the Board finding a likelihood of confusion.

 

However, when considering the relatedness of the goods, the Board stated that “we cannot per se deem wines and non-alcoholic apple juices or beverages as related goods; rather, we must examine the particular factual circumstances of each case.”

Franciscan, as plaintiff in the proceeding, bore the burden of establishing a likelihood of confusion by a preponderance of the evidence.  Here, Domaine did not even submit evidence nor file a brief with the Board. Nevertheless, the Board found that Franciscan failed to introduce evidence that the same entities produce and sell both wine and “[a]pple juices” or “apple-based non-alcoholic beverages,” or that they market the productsunder the same mark in the United States.  Further, Franciscan failed to present evidence showing that the products are complementary (e.g., consumed together at the same meal), or that the goods are sold in proximity to each other in retail outlets. 

 

The lack of evidence regarding relatedness of the goods outweighed the similarity of the marks and all other factors which favored a finding of likelihood of confusion.  Thus, the Board concluded that Opposer failed to prove a likelihood of confusion by a preponderance of the evidence and dismissed the Opposition.  For a full text of the case see:  Opposition No. 91178682 (October 16, 2013) [not to be cited as precedent].

 

http://ttabvue.uspto.gov/ttabvue/v?pno=91178682&pty=OPP&eno=63

 

It just goes to show that each case must be considered on its own merits and the apple doesn’t fall far from the tree (and into the wine vat).

 

For more information or assistance on trademark matters contact Katja Loeffelholz at kloeffelholz@dpf-law.com. 

 

 

 

Copyright Dickenson Peatman & Fogarty at www.lexvini.com

Legal Highlights from CalPoly’s New Wine & Viticulture Program

Dickenson, Peatman & Fogarty attorneys Carol Kingery Ritter and Katja Loeffelholz were recently guest lecturers at Cal Poly San Luis Obispo’s new Wine and Viticulture program. The class was led by Professor William H. Amspacher who is promoting the interdisciplinary major of Wine and Viticulture. All students in the interdisciplinary major are educated about all aspects of the wine industry, with a curriculum that combines an understanding of vineyards, winemaking and wine business. 


Ms. Kingery Ritter presented “Planning Your Entry Into and Exit from the Wine Industry” and discussed business planning, business structures and the acquisition of assets. Ms. Loeffelholz, a registered attorney with the United States Patent and Trademark Office presented “Protecting Your Intellectual Property Assets in the Wine Industry” which reviewed the various aspects of wine labels and packaging that can be trademarked, copyrighted and patented. Ms. Loeffelholz also presented detailed information on protecting trademarks abroad, focusing on protecting wine brands in China. Ms. Loeffelholz’s presentations can be accessed at the following links:

 

https://www.dpf-law.com/userfiles/news/KL—IP-Dynamics-In-the-Wine-Industry-2013.pdf

 

https://www.dpf-law.com/userfiles/news/Trademark-Protection-for-Wine-in-China.pdf

 

To learn more about the Wine and Viticulture program at Cal Poly San Luis Obispo please contact Dr. Jim Cooper at jbcooper@calpoly.edu. For more information on how you can structure your wine business and plan for your wine business, please contact Carol Kingery Ritter at ckingery@dpf-law.com. To obtain more information about protecting all aspects of intellectual property in your wine label and packaging in the United States and abroad please contact Katja Loeffelholz at kl@dpf-law.com.

Copyright Dickenson Peatman & Fogarty at www.lexvini.com

Trademark Protection for Wine in China

In Fall 2013, DP&F’s Katja Loeffelholz was a guest lecturer at Cal Poly San Luis Obispo’s new Wine and Viticulture program on  “Protecting Your Intellectual Property Assets in the Wine Industry” which reviewed the various aspects of wine labels and packaging that can be trademarked, copyrighted and patented. Ms. Loeffelholz also presented detailed information on protecting trademarks abroad, focusing on protecting wine brands in China. Her presentation can be found through the links below.

COVER-Loeffelholz-Trademarks-Wine-China

Loeffelholz-Trademarks-Wine-China

Exporting Wine to China Seminar Report – Part I

Dickenson, Peatman & Fogarty attorney Katja Loeffelholz, a registered attorney with the United States Patent and Trademark Office, recently presented at The Seminar Group’s “Exporting Wine to  China” program on “Protecting Intellectual Property.”

 

China represents the single largest growth opportunity for wine producing countries around the world.   China is a brand driven market.  So what are the challenges in protecting intellectual property in  China?  

 

 

One of the principal difficulties of protecting intellectual property in China is the failure of U.S. wine brand owners to register their trademarks in  China.  Sometimes the failure to register stems from the mistaken belief that a U.S. registration protects them abroad, or the belief that registration in  China is expensive and time consuming.  For others still, business or wine exports may be expanding so rapidly that they unintentionally expose to themselves to risk by postponing registration.

 

 

China’s Standing Committee of the National People’s Congress has passed new trademark law provisions that should improve a trademark owner’s ability to enforce their rights and deter infringers.  The new law provides for an increase in statutory damages.  Where the infringer is believed to have acted in bad faith, the courts may also award treble damages.  These revisions to the law will serve as a deterrent to infringers while signaling to the rest of the world that  China will not tolerate a violation of trademark rights.  

 

 

However, a U.S. wine brand owner will be unable to take full advantage of the provisions of the new China trademark law unless and until it registers its mark in  China.  There are essentially two ways for a U.S. company to obtain trademark registration in  China.  The first is to have its trademark counsel file the trademark application directly in  China working with foreign counsel.  The second is to use its  U.S. trademark registration as a basis for submitting an International Registration with the United States Patent and Trademark Office.  It should be noted that a trademark registration in the People’s Republic of China will not provide trademark protection in Hong Kong or  Macau.  Separate applications will need to be made.

 

 

For more information on how you can secure trademark rights in the  U.S. and abroad, please contact Katja Loeffelholz at kl@dpf-law.com. To obtain a copy of Ms. Loeffelholz’s presentation “Protecting Intellectual Property” presented at the “Exporting Wine to  China” conference please visit www.TheSeminarGroup.net 

Copyright Dickenson Peatman & Fogarty at www.lexvini.com

Wine & Trademark Law: Creating, Protecting & Building Equity in Your Wine Brand

Dickenson, Peatman & Fogarty attorney Katja Loeffelholz, a registered attorney with the United States Patent and Trademark Office, recently presented “Creating, Protecting & Building Equity in your Wine Brand” at the Wine Industry Forum.  You can download a copy of Ms. Loeffelholz’s presentation here:
 
 
The presentation provides an introduction and overview of trademark law as it specifically applies to the wine industry.  It includes several examples of what aspects of a wine label, bottles and packaging can be protected.  In addition to trademarks, other things closely associated with brands — such as  slogans, colors, specific product features, designs and bottle configurations — are protectable assets.  
 
In addition, Ms. Loeffelholz’s presentation addresses what makes a strong mark; adopting and clearing a brand; trademark registration; enforcing your intellectual property rights; and how copyright in label designs and design patents in bottle shapes create additional brand equity.  The presentation also points out various pitfalls wine industry clients encounter in selecting and protecting their brand, and how to avoid them.  
For more information on trademark or patent matters, please contact Katja Loeffelholz at kl@dpf-law.com
Copyright Dickenson Peatman & Fogarty at www.lexvini.com

Gallo Drops the Bomb, Sues Grenade Energy Drink Co. for EL GALLO and EL GALLITO Trademarks

E & J Gallo Winery (Gallo) has sued Grenade Beverage LLC (Grenade) for trademark infringement seeking an injunction as well as monetary damages.  Gallo owns federal trademark registrations for GALLO covering wines.  Gallo also utilizes a rooster on its wine label.  In addition to wine, Gallo sells other alcoholic beverages such as brandy, tequila, vodka, rum and gin. 
Grenade is promoting EL GALLO as a mixer for alcoholic beverages, namely, tequila, and also utilizes a rooster image on its label.  Grenade has also applied to register the mark EL GALLITO covering beverages, namely, carbonated and non-carbonated energy or sports drinks.  Gallo has included claims against this application in its Complaint and had previously filed an opposition proceeding at the Trademark Trial and Appeal Board (TTAB) opposing Grenade’s registration of the mark.  Due to the long and continuous use, extensive advertising and promotion of the GALLO marks, Gallo is contending that Grenade is using the EL GALLO and EL GALLITO marks with full knowledge of Gallo’s marks borrowing from the goodwill, reputation and fame of the GALLO marks.  Given what appears to be the solid legal footing of Gallo’s Complaint, it will be interesting to see just how Grenade crows back.  We’ll provide updates as the case proceeds.
For further information or assistance on trademark matters contact Katja Loeffelholz at kl@dpf-law.com. 
Copyright Dickenson Peatman & Fogarty at www.lexvini.com

USPTO Finds Trademark CHAMPARTY Not Confusingly Similar to CHAMPAGNE Appellation

Comite Interprofessionel du Vin de Chamagne (CIVC) and Institut National de l’Origine et de la Qualite (INAO) who under French law are charged with controlling, promoting and protecting the common law certification mark CHAMPAGNE, opposed the registration of the mark CHAMPARTY for “alcoholic beverages except beers.”  CIVC/INAO argued that the marks CHAMPAGNE and CHAMPARTY are confusingly similar.
The Trademark Trial and Appeal Board (Board) found the parties goods to be identical.  While normally this factor alone would weigh heavily in favor of finding a likelihood of confusion, the Board found the marks CHAMPARTY and CHAMPAGNE dissimilar.  The Board stated that “customers of average perceptual abilities would not mistake one mark for the other or find the marks to be significantly similar” even if used on identical goods. CIVC/INAO argued that CHAMPAGNE is often associated with celebrations and thus PARTY might suggest a connection with CHAMPAGNE especially given that the initial letters are identical in both marks.  The Board was not persuaded as CHAMPAGNE is a term well known as a type of sparking wine, but CHAMPARTY has no literal meaning.  In fact, the Board noted that the English word “party” is a prominent feature of the CHAMPARTY mark and that the PARTY portion of the mark is “likely to counteract the visual similarities between the two marks in the perception of the consumers.”  Unfortunately for CIVC/INAO, there was no evidence of record that CHAMPAGNE is more closely connected with celebrations than that of any other alcoholic beverage.  Similarly, the Board saw no support for the argument that consumers would view CHAMPARTY as a kind of “brand extension” of the CHAMPAGNE mark nor did not discern any other rationale why consumers might perceive a relationship or connection between the marks.

The Board concluded that the mark CHAMPARTY differs substantially from the mark CHAMPAGNE, “so as not to be likely to cause confusion, mistake or deception as to the source of applicant’s goods.”  Alas, CIVC/INAO has the CHAMPAGNE, but nothing to celebrate.

Link to:

For any questions or assistance on trademark matters contact Katja Loeffelholz at kl@dpf-law.com.

Copyright Dickenson Peatman & Fogarty at www.lexvini.com

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 decision may be found at the following link:

http://ttabvue.uspto.gov/ttabvue/v?pno=91197659&pty=OPP&eno=48

When evaluating the issue of likelihood of confusion between two trademarks the principal considerations are the similarity of the marks and the similarity of the goods.  When no similarity is found as to one of these two categories, there is almost always a finding of no likelihood of confusion.

In this case, the issue of similarity was fairly cut and dry.  GOTT and GOTT LIGHT are obviously similar given the dominant use of the term “GOTT.”  The marks JOEL GOTT and GOTT LIGHT were also found to be similar given that both marks contained the term “GOTT” and the fact that the term “JOEL” connotes a persons name giving emphasis to the term “GOTT.”

The more interesting part of this case was the finding as to similarity of the goods: water and wine {insert bad religious pun here}.  Goods are generally found to be similar and related if they are complimentary, move through the same channels of trade, or if there is evidence that the same mark is not uncommonly used on both types of goods.  In this case, JGW submitted evidence that demonstrated that it is fairly common for wineries to offer water in their tasting rooms that is branded with the same mark as their wine.  JGW also submitted evidence that demonstrated that water and wine are sometimes sold in the same areas of a store, or will appear in the same section of restaurant menus.  Additional evidence demonstrated that wine and water are also used in a complimentary fashion such as for mixed drinks like a wine spritzer.  

Given all of this evidence, the TTAB concluded that water and wine are related goods, and given the similarity between the marks at issue, there existed a likelihood of consumer confusion between the JGW marks for wine and the GOTT LIGHT mark for water.  Accordingly, the trademark application for GOTT LIGHT was denied.

This case was designated by the TTAB as precedential meaning it can serve as a basis to support findings in future cases.  Typically, the TTAB only designates about fifty cases as precedential in a calendar year.

Dickenson, Peatman & Fogarty is proud to have represented Joel Gott Wines in this case.

For any questions or assistance on trademark matters or TTAB opposition proceedings contact Scott Gerien at sgerien@dpf-law.com.

Copyright Dickenson Peatman & Fogarty at www.lexvini.com

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 Proprietaires Viticulteurs De Chateauneuf-Du-Pape.  
 
On June 14, 2013, the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) issued a decision denying an opposition brought by the Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape against negociant Pasquier DesVignes which applied to register the trademark CHEMIN DES PAPES for wine.  The Syndicat asserted a claim of confusing similarity based on a registered trademark for CHATEAUNEUF-DU-PAPE CONTROLE and Design for wine in class 33 (see below) and based on an alleged common law certification mark for CHATEAUNEUF-DU-PAPE for wine.  
 
 
 
A link to the decision may be found here:
While not krush groovin’, the case is quite interesting (to trademark lawyers and appellation geeks) on many levels.  One of the more interesting issues (although not electro-shocking) is the strategy employed by the Syndicat in protecting the geographical indication “Chateuneuf-du-Pape” and how this played out in the opposition refusal.  
 
The Syndicat claimed that it owned a common law geographical certification mark for CHATEAUNEUF-DU-PAPE under U.S. law as a result of the control it asserted over the appellation “Chateuneuf-du-Pape.” However, the TTAB found that the Syndicat could not claim ownership of a common law geographical certification mark in CHATEAUNEUF-DU-PAPE because there was evidence that other entities also controlled the use of the appellation, most notably L’institut National de l’Origine et de la Qualité (“INAO”), the French governmental agency in charge of appellation standards throughout France.  The TTAB also noted that there was no evidence that there were any agreements between the Syndicat and these other parties as to control of the appellation (this is in contrast to other cases where the  Bureau National Interprofessionel du Cognac successfully proved a common law geographical certification mark in COGNAC by demonstrating its relationship with INAO).  As a result, the TTAB found that the Syndicat could not claim common law rights in CHATEAUNEUF-DU-PAPE as a geographical certification mark as it did not appear to have exclusive control over the term.  Thus, the common law certification mark claim was not to be the Syndicat’s hyperspace in this game of Defender.
 
As a side note, during its analysis the TTAB did acknowledge that CHATEAUNEUF-DU-PAPE is a geographical indication, which we believe is the first time that the USPTO, or any other US governmental body, has acknowledged a term as a “geographical indication” thereby recognizing the legal significance of geographical indications in the U.S. This is of some consolation to some proponents of geographical indications, but not the robotic-satisfaction for which others may have hoped.
Having found that the Syndicat could not assert rights in a common law certification mark in CHATEAUNEUF-DU-PAPE, the TTAB turned to the claim of likelihood of confusion based on the registered trademark for CHATEAUNEUF-DU-PAPE CONTROLE and Design in class 33 for wine. The TTAB analysis of the fame of the CHATEAUNEUF-DU-PAPE CONTROLE and Design trademark turned back again to the issue of who actually controlled the appellation. The TTAB repeatedly questioned evidence of fame of the mark based on sales and advertising of wine identified as CHATEAUNEUF-DU-PAPE noting that the Syndicat did not own or exclusively control the appellation, but rather the mark CHATEAUNEUF-DU-PAPE CONTROLE and Design.  Thus, evidence of sales and marketing for all CHATEAUNEUF-DU-PAPE wine could not support a claim that the Syndicat’s mark CHATEAUNEUF-DU-PAPE CONTROLE and Design was famous.  So perhaps some body rockin’, but not perfection.
At the end of the day, whether or not the Syndicat was able to demonstrate that it owned common law rights in CHATEAUNEUF-DU-PAPE as a geographical certification mark was probably a moot point given the fact that the TTAB ultimately determined that CHEMIN DES PAPES and CHATEAUNEUF-DU-PAPES and Design were simply not similar given the differences between the marks and the fact that there were numerous other third party “PAPES” marks for wine in the marketplace such as L’ESPRIT DE PAPE, CAVES DES PAPES and VIEUX PAPES.This case is a good read for anyone interested in the intersection of geographical indications and trademarks and highlights the difficulty of trying to protect geographical indications as certification marks under U.S. law.  Tell me party people, is that so wrong?

For questions or assistance on trademarks and geographical indications contact Scott Gerien at sgerien@dpf-law.com.

Copyright Dickenson Peatman & Fogarty at www.lexvini.com

A Hit Like a Ton of BRIX – Trademark Office Protects Restaurant’s Rights in BRIX Trademark

One of the many benefits of obtaining federal trademark or service mark protection is that the Trademark Office will prevent registration of marks which are confusingly similar.Yountville Partners, Inc., simply by registering its marks BRIX and BRIXX for restaurant and bar services, was successful in preventing the registration of the marks BRIX WINE CELLARS, BRIX CELLARS and BRIX WINE CELLARS and Design for wine bars and restaurant services (“other BRIX marks”).  The Trademark Office refused to register the other BRIX marks for wine bars and restaurant services finding a likelihood of confusion with BRIX/BRIXX marks for restaurant services.  First, the Trademark Office determined that the marks were virtually identical giving no weight to the argument that the words “wine” and “cellars” helped to distinguish the marks.

Second, the Trademark Office found that the “restaurant services” and “wine bars” and the other services recited in the applications and registrations were deemed to be legally identical.  Applicant’s arguments that its wine bar is “somewhat dark and sophisticated and has a relatively enclosed atmosphere,” while registrant restaurant establishment “has a relatively light and airy atmosphere overlooking outdoor vistas” was unpersuasive.  Further, the Trademark Office was not convinced that restaurant consumers were “sophisticated” stating that “restaurant and bar services can run the gamut in terms of cost and clientele.”

Finally, Yountville Partners, Inc. enjoyed a presumption of exclusive right to nationwide use of the registered marks regardless of its actual extent of use. Thus, the argument that the other BRIX marks were only used inHouston so there would be no likelihood of confusion was unpersuasive.

In theUnited States, the Trademark Office will work to protect the value of marks for those that avail themselves of the relatively inexpensive trademark and service mark registration system.  However, the USPTO makes decisions as to registration of marks but has no jurisdiction to stop a party from using a mark.  Such jurisdiction rests exclusively with the state and federal courts.

This opinion, which is not a precedent, was recently obtained in a proceeding before the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) In re Brix Cellars LLC dba Brix Wine Cellars, Serial Nos. 85111647, 85111682 and 85112408 (TTAB 2013).  The following is a link to the opinion:  http://ttabvue.uspto.gov/ttabvue/ttabvue-85111647-EXA-20.pdf.

For any questions or assistance on trademark matters contact Katja Loeffelholz at kl@dpf-law.com.

Copyright Dickenson Peatman & Fogarty at www.lexvini.com

March 6th Presentation on Trademark Best Practices

Scott Gerien, head of Dickenson, Peatman & Fogarty’s Intellectual Property Department, will be appearing on a panel with Judith Schvimmer, Vice President and Legal Counsel at Jackson Family Enterprises, on  “Trademark Protection” on March 6 at 12:00 PST.  The presentation will be a TeleBriefing sponsored by Law Seminars International 
In this 90-minute TeleBriefing, the panel of speakers will address current best practices for trademark selection, use, maintenance and protection. This is a must-attend TeleBriefing for in-house counsel, outside general counsel and corporate executives who are required to handle trademark related issues from time to time.  Given the experience of the panel, the presentation will also address trademark issues related to the wine industry.
The link to the online brochure can be found here: http://www.lawseminars.com/seminars/13TRADETB.php
LSI will offer a discount of $25 off of the regular registration rate to LexVini readers.  Please contact LSI with any questions (206) 567-4490.
Copyright Dickenson Peatman & Fogarty at www.lexvini.com

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 with your trademark and you then offer it for sale via the Internet, a retail store, or some other sales outlet.  However, when it comes to products that are regulated by the government, such as wine, there is the additional question of whether a use is lawful if the seller of the wine has not complied with all of the government regulations necessary to sell the product.  For instance, the Alcohol and Tobacco Tax and Trade Bureau (“TTB”) requires that before a wine may be released from bond or Customs a party must first obtain a Certificate of Label Approval (“COLA”) for the label for such wine.  So, if a party has not obtained a COLA when it first sells its wine, can that party establish lawful use of the mark in commerce as of that date of first sale absent the COLA?
This issue was recently addressed in a proceeding before the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) in the case of Churchill Cellars, Inc. v. Brian Graham, Opp. No. 91193930 (TTAB 2012).  Following is a link to the opinion: http://ttabvue.uspto.gov/ttabvue/ttabvue-91193930-OPP-23.pdf
In the Churchill case the TTAB found that even though the party claiming rights in the trademark at issue had not first obtained a COLA before making use of the mark on wine in commerce, such use was not necessarily unlawful so as to preclude the establishment of trademark rights.  The TTAB noted that it is not in a position to evaluate whether a party is in compliance with the regulatory schemes of other government agencies and absent some finding from a Court or an administrative agency such as TTB, TTAB cannot make a determination of whether the administrative failure to obtain a COLA made the use of the mark on the wine illegal.  The TTAB further noted that there was no evidence that the party would have been denied a COLA had it applied for one, and in fact a COLA was subsequently obtained for the label featuring the mark by the producer of the wine.  Therefore, TTAB concluded that it would not deny the party its claim of trademark rights simply because it failed to follow an administrative procedure.
This is good news in the sense that a party cannot be denied its trademark simply because it did not obtain a COLA. However, it can hardly be recommended that a party attempt to make use of a mark before obtaining a COLA simply to establish trademark rights.  Had the party opposing the trademark in this case raised the issue with TTB of the other party’s failure to obtain a COLA it is possible that there may have been a decision from TTB finding the sale of the wine to be unlawful thereby providing the USPTO TTAB with a basis for finding that the use of the mark was also unlawful.  Furthermore, the sale of wine without a COLA could result in significant penalties from TTB which could have a much more significant impact on a winery’s overall business.  Thus, while this decision may be positive from a trademark rights perspective, it should not act to encourage wineries to sell wine without a COLA simply to establish trademark rights.
From a legal analysis perspective, it should also be noted that this decision is precedent in the USPTO where decisions are made as to registration of trademarks.  However, the USPTO has no jurisdiction to stop a party from using a mark.  Such jurisdiction rests exclusively with the state and federal courts.  Furthermore, the decision of the Ninth Circuit Court of Appeals in the case of CreAgri, Inc. v. Usana Health Services, Inc., 474 F.3d 626 (9th Cir. 2007) took an arguably broader view of the unlawful use issue in the context of labeling requirements for dietary supplements under the Food, Drug and Cosmetic Act such that it could be argued that the Ninth Circuit could reach a decision different than that reached by the TTAB in the Churchill Cellars case. 
Therefore, it seems apparent that it is still in a winery’s best interest to obtain a COLA before selling a wine rather than selling the wine without the COLA simply to establish trademark rights.  The better course of action to quickly establish trademark rights in a wine brand is to file an intent-to-use trademark application with the USPTO which establishes rights as of the day of filing without having to first use the mark in commerce, lawfully or unlawfully.
For any questions or assistance on trademark matters contact Scott Gerien at sgerien@dpf-law.com 

Copyright Dickenson Peatman & Fogarty at www.lexvini.com

Wine Institute Presentation on Protecting Your Brand in China

On July 24, 2012, Wine Institute held its California Wine Export Seminar at The City Club in San Francisco.  The highlight of the Seminar was a special panel presentation on the Chinese wine market featuring Maria Troen from Wine Intelligence, ZJ Tang from Chicago Chinese Cultural Institute, Pete Hou, Wine Institute’s trade representative in China, and Scott Gerien from Dickenson, Peatman & Fogarty.  The panel presented on market issues, cultural issues, trade issues and legal issues related to selling California wine in China.  To review the full PowerPoint presentation by Scott Gerien on legal issues related to protecting wine brands in China, click HERE.


For more information on protecting your wine brand in China contact Scott Gerien at sgerien@dpf-law.com. 
Copyright Dickenson Peatman & Fogarty at www.lexvini.com

Trademark for Alcohol Held Confusingly Similar to Identical Mark for Cigars

The U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) recently refused registration of the mark MOCAMBO for rum based on a prior registration for the mark MOCAMBO for cigars.  In refusing the registration, the TTAB found that rum and cigars are complementary products in that cigars are enjoyed with a glass of fine rum and are marketed together for simultaneous consumption.  As a result, the TTAB concluded that consumers seeing these products labeled with the identical mark would likely believe that the goods originate from the same source and as a result the marks are confusingly similar.  To read the full opinion in this case follow this link: In re Licores Veracruz.

While this case did not involve a mark for wine, the same result likely would have followed if the goods at issue were wine and cigars since these goods are also marketed together for simultaneous consumption.  This decision is important because it indicates that in clearing a mark for adoption and use on wine, identical marks on complementary goods such as cigars must also be considered in the analysis.

For more information or assistance on trademark clearance contact Scott Gerien at sgerien@dpf-law.com

Copyright Dickenson Peatman & Fogarty at www.lexvini.com