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 [email protected]

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 head of DP&F’s intellectual property practice, discusses these issues in his column in the January 2012 issue of NorthBay biz which may be accessed HERE.

For more information or assistance on international trademark protection contact Scott Gerien at [email protected]

"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 (alcohol cocktail mixes), SKINNY APPLE (hard cider), SKINNY CAIPIRINHA (prepared alcoholic cocktails), SKINNY MOJITO (alcoholic beverages except beer), SKINNY MOMMY (wine) and SKINNY PIRATE (alcoholic cocktail mixes), not to mention the related application for SLIM COCKTAIL (alcoholic mixed beverages except beers).

This latest trend is no doubt inspired by the acquisition of the SKINNYGIRL brand of prepared margarita cocktails by Beam Global from New York Housewife Bethany Frankel for $120 million.

The term “SKINNY” was not unique to the SKINNYGIRL brand when Beam decided to acquire it as there existed established brands with registered marks such as THE SKINNY BITCH for wine and SKINNY TINIS for wine, spirits and liqueurs.  Thus, neither Frankel nor Beam could claim exclusivity to the term “SKINNY” in association with alcohol beverage products when the SKINNYGIRL mark was adopted.

Industry publications have indicated that the value of the deal to Beam Global was “to access the built-in demographic and platform that Frankel brings to the table” through her reality TV presence and online social networking outlets.  This is a good thing for Beam because the brand itself appears susceptible to knock off without any remedy as evidenced by the prevalent use of “SKINNY” in association with alcohol beverage products and the recent flurry of trademark applications.

This is a good example of how the value of a brand consists of more than just the name, but also how brands without an exclusive right to the distinctive portion of the brand identity are susceptible to legal attempts to free ride on the brand success through the copying of the non-exclusive term which consumers may associate with the brand, i.e., “SKINNY.”.

For more information or assistance on trademark matters please contact Scott Gerien at [email protected] 

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 has actually been used in commerce on or in association with the goods.

However, it is not enough that the use of the trademark be in commerce, the use must also be a “lawful” use in commerce.  For the large majority of goods and services, “lawful” use is never really an issue; if you decide to sell t-shirts under a particular mark all you need to do is label the shirts with the trademark and start selling them.  However, for those goods subject to government regulation, such as wine, a mark can only be “lawfully” used in commerce once all of the regulatory hurdles for sale of the wine have been met.

Interestingly, although there is a long history of case law dealing with the “lawful” use of a mark, the goods at issue in such cases have been things such as pharmaceuticals, fresh meat and securities investment services, but never wine.  This recently changed when on March 31, 2011, the U.S. District Court for the Eastern District of California held valid a pleading that a winery’s use of its trademark was not “lawful” because a Certificate of Label Approval (“COLA”) for the wine label featuring the mark was not obtained prior to the use of the mark on a label.  While this is merely a ruling that allows the claim to go forward, it is important in that the Court held that, in relation to wine, “for purposes of trademark priority, lawful use may require compliance with labeling requirements.”  Wine Group LLC v. L. & R. Wine Co.,10-cv-02204-MCE-KJN (E.D.Cal. 2011).

Accordingly, wineries should take heed and note that any actions they take (other than filing an intended use trademark application) prior to receiving a COLA and making sure all of their licensing and compliance requirements are in place, cannot establish trademark rights in a wine name or brand.  Additionally, any trademark applications for wine based on use, or allegations of use to perfect an intent-to-use trademark application, cannot rely upon use of a mark that is not “lawful” and in compliance with all labeling and licencing requirements for a wine.  Most wineries and trademark practitioners without experience with wine industry regulation will frequently make the mistake that simply mocking up a label and putting the wine in the tasting room without a COLA is sufficient to establish use of the mark in commerce, when in fact such use is not “lawful,” and therefore not a valid trademark use in commerce,

For more information or assistance on trademark matters, contact Scott Gerien at [email protected]

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 is accomplished by the filing of an intended-use trademark application with the U.S. Patent and Trademark Office (USPTO).  An intended-use application allows the applicant to essentially lock up a name for a particular product or service for a period of time.  If the intended-use application is approved by the USPTO and not opposed by another party based upon some prior right, the applicant then only has to use the name on the identified goods or services in order to perfect the trademark registration, and the trademark rights in the name are then retroactive to the filing date of the trademark application.  After registration, the trademark registrant can then stop any intervening users who may have adopted the same or similar names between the filing date of the application and the date of registration (a period which may be several years long), even if such intervening user actually used the name before the trademark registrant used the name.

Because this process allows a party to secure national rights in a name before use has begun, it is one of the first steps many producers will take once they have decided to adopt a particular brand name.  Accordingly, watching trademark filings can reveal interesting market trends.

For instance, a review of filings for trademarks for wine in February of 2011 reveals the following interesting tidbits:

• Paterno Wines International, aka Terlato Wines, appears to be pursuing a branding strategy involving text messaging abbreviations and acronyms including the following: BTW; BRB; BFF; FML; FYI; IDK; TLC; TMI; WTF; XOXO (extra credit for anyone who can identify the meanings for all of these abbreviations; do you think TTB will approve a COLA for WTF?)
• The Wine Group appears intent on beating to death the “pastry” market it first exploited with its CUPCAKE brand with new trademark applications for the following names: SMALL CAKES; SWEET SHOPPE; JELLY DONUT; LEMON CHIFFON PIE (I wonder how Layer Cake feels about these new marks?)
• Precept Wines also appears intent on jumping on this band wagon with applications for the following:
  CONFECTIONER’S CHOCOLATE; CONFECTIONER’S ANGEL CAKE; CHOCOLATE SHOP CRÈME DE COCOA (something just unappealing about wines named after bakery sweets).

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 the trademark applications or registrations at issue, as well as the goods as described in such applications or registrations. 

In this case, the marks were identical as identified in the respective trademark application and registration, i.e., the word “UPSLOPE.”  Therefore, the critical issue was whether beer and wine are sufficiently related such that consumers would believe that both a beer and wine labeled with the mark UPSLOPE were somehow associated with one another or emanated from the same source.

Applicant, Upslope Brewing, argued that alcohol beverages (e.g., beer and wine) are not related goods per se.  The TTAB agreed stating that the relatedeness of alcohol beverages is not an absolute rule and evidence must be considered before making such a determination. However, after reviewing the record, which included Internet evidence of retailers offering beer and wine on their websites, and copies of several registered trademarks in use for both beer and wine, the TTAB was persuaded that the two goods are closely related. 

While this opinion clearly establishes that relatedness of alcohol beverages must be proven on a case-by-case basis, it also illustrates that the threshold for such evidence in the TTAB is fairly low such that relatedness can usually be proven so as to support a finding of likelihood of confusion between similar marks for beer and wine.

The full opinion may be found at the following link: In re Upslope Brewing LLC, Serial No. 77650402

For further information or assistance with trademark matters contact Scott Gerien at [email protected]

Casella Wines Files Amended Complaint Accusing The Wine Group of Intentionally Infringing its Yellow Tail Design Trademark

In October of 2010, Casella Wines, the producers of YELLOW TAIL wine, filed a lawsuit in U.S. District Court in New York against The Wine Group claiming trademark infringement of Casella’s federally-registered wallaby design mark featured on Casella’s YELLOW TAIL wine (see below):

GARNET Trademark Sold by Saintsbury; To Become Stand-Alone Pinot Noir Brand

Saintsbury, owner of the GARNET trademark for wine (U.S. Reg. No. 1,669,670), has sold the brand to the principals of Silverado Winegrowers, a long-time grower for Saintsbury and the GARNET brand with vineyard holdings throughout California.  Saintsbury has used the GARNET mark along with its SAINTSBURY house mark in the manner shown in the label below:

The new owners have indicated that they intend to establish GARNET as a stand-alone brand for a 100% estate-grown Pinot Noir line of wine sourced from their vineyard holdings, including their Carneros vineyards that served as a source for the GARNET wine produced by Saintsbury.  The new owners have also acquired Saintsbury’s Sonoma production facility that was used to produce the GARNET wine to ensure a seamless transition of the brand.

An examination of the Trademark Register at the U.S. Patent and Trademark Office indicates that Saintsbury was very successful in preventing others from registering marks similar to, or encompassing the mark GARNET, thereby maintaining a broad scope of protection for the mark.  This allows the new owners greater flexibility in transitioning the mark from a brand used in association with the SAINTSBURY house mark to a stand-alone brand with its own distinct brand significance.

For further information or assistance on trademark matters contact Scott Gerien at [email protected]

Most Interesting New Wine Trademark Applications Filed in December 2010

Each month the editors of Lex Vini will select the most interesting wine trademark applications filed with the U.S. Patent and Trademark Office in the prior month.  In keeping with the broad meaning of “interesting,” the marks may be selected because they have significant business interest, they demonstrate potential new themes in branding, or simply because they are quirky and different.

In December of 2010, there were two themes which appeared to have some popularity for trademarks in the wine sector: lust and candy (surprising for Christmas considering these are usually reserved for Valentine’s Day). 

In the lust category, there were filings for NAUGHTY VIRGIN (App. Ser. No. 85/202,467 by Pazdar Beverage Company), LIVING IN ZIN (App. Ser. No. 85/194,073) and PEEP SHOW (App. Ser. No. 85/189,663 by Terravant Wine Company).

In the candy category, there were filings for the marks CHOCOLATE CUVEE (App. Ser. No. 85/203,314 by One Plus Two, Inc.), LOLLIPOP (App. Ser. No. 85/199,787 by Paterno Imports Ltd.) and ITALIAN CHOCOLATE (App. Ser. No. 85/200,611 by Rocland Estate Pty Ltd).

Also, in the “odd combination, but undoubtedly distinctive” category of wine trademarks were STEAK AND POTATOES (App. Ser. No. 85/189,627 by Terravant Wine Company) and FALCON AND HIPPO (App. Ser. No. 85/205,742 by Clare Ranch LLC).

In an apparent attempt to capitalize on the shift in Congressional leadership there was also RIGHT WING RED (App. Ser. No. 85/203,291 by One Plus Two, Inc.), in what might be an homage to Jersey’s favorite mobster was TATTOO TONY’S from Atlantic Bottling, LLC in Ocean, NJ (App. Ser. No. 85/208,584), and in what might be marks “inspired by” Bay Area rock bands there was GRAPEFUL RED (App. Ser. No. 85/191,662 by R.H. Winery LLC) and RHUBY DOOBY (App. Ser. No. 85/206,440 by Guinan Family Winery & Vineyard, Inc.)(although this last one could also be a tribute to 70s cartoon icon Scooby Doo — “rhuby dooby doo”).

Never boring in the world of wine trademarks.

For assistance on your trademark matters contact Scott Gerien at [email protected]