The Metaverse and Your Wine Brands
Every winery and wine brand will eventually need a Metaverse strategy.
During the pandemic, some wineries have become adept at conducting on-line tastings and enhancing customer experience by providing virtual vineyard, winery and cellar tours. Wineries were compelled to connect online with customers like never before. This is just the beginning. Wine businesses will need to adapt to an increasing technological sales process not only online but in the Metaverse.
The Metaverse is a virtual and immersive digital world that that reflects our real lives in many respects. The Metaverse is inhabited by digital representations of people, places and things (including brands). The Metaverse experience can provide experiences on par with the real world, while also offering experiences beyond those of the real world, for example, the sensation of human flight.
Of importance to brand owners, the Metaverse hosts a growing virtual marketplace that allows users to buy, sell and share digital assets like NFTs (non-fungible tokens), virtual real estate, experiences, information and virtual goods. It will be inhabited by users living second (or even third) lives – wholly digital lives. Just as the Metaverse parallels our real lives, where branding is used in the real world it will have a digital partner in the Metaverse.
Wineries should be interested in the Metaverse because retail will be one of the largest sectors in it, with social experiences, a close second. In addition, wineries should care about the Metaverse because it will have real world impact on their marketing and branding. Not only will the Metaverse be a new market for products and services, it will also be a new source of data collected from users of the Metaverse that can be leveraged by businesses in the real world. Just as real-world sales drive sales in the Metaverse, the Metaverse can drive sales in the real world.
There will be opportunities in the Metaverse for wine product placements (branded products in games or experiences), virtual events like cellar, winery and vineyard tours, virtual tastings, computer generated retail stores featuring wine, and virtual online education featuring branded content or sponsorship. The Metaverse can also offer wineries opportunities for sales of NFTs, for example, NFT Wine Club has more than three thousand real-life vines in Napa, California which are tied to a digital NFT. In addition, Wine Bottle Club will replicate its physical cellar in a virtual shop in the OVER (OVR) Metaverse.
The Metaverse is likely to become an important part of the wine industry marketing and sales. In addition to real world brands make sure your trademarks are registered for virtual goods, goods for use in online environments, virtual online environments and extended reality virtual environments, retail store services featuring virtual goods, etc. A trademark for a real-world brand may not protect you in the Metaverse. Ensure that your trademarks are registered for digital and virtual reality products. This is the key to protecting a brand in the Metaverse.
For assistance with branding protection in the Metaverse or the real world, contact Katja Loeffelholz.
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.
Tacking your New Trademark onto the Old? Supremes: Ask a Jury
Resolving a circuit split, the Supreme Court in Hana Financial, Inc. v. Hana Bank, et al., 574 U. S. ____ (2015) on Wednesday unanimously affirmed a Ninth Circuit decision that the issue of “tacking” – where a trademark user modifies its mark over time while managing to retain its longstanding use and priority position over others (i.e., “tacking” a newer mark onto an older version) – is usually an issue appropriately tried to a jury.
In so holding, the Court validated a District Court jury decision that Respondent Hana Bank did not infringe Petitioner Hana Financial’s trademark (although Hana Financial appeared to have priority in the U.S. going back to 1995) in part because Hana Bank operated under a series of “Hana” names (including advertising as “Hana Overseas Korean Club”) going back to 1994 in the U.S., and had operated under the name Hana Bank in Korea going back to 1991.
The case has some interesting implications. The question of whether two similar trademarks owned by the same party can be tacked together to provide earlier priority has historically come down to whether the marks are “legal equivalents” conveying the same, continuous commercial impression in the community and in particular, the eyes of the ordinary consumer.
Citing to an 1874 case for the proposition that “twelve men know more of the common affairs of life than does one man,” the Court determined that consumers, not judges, are in the best position to make this determination.
In the opinion rendered by Justice Sotomayor (slip opinion available at: https://home.comcast.net/~jlw28129/HANA.pdf), concerns such as potential lack of uniformity of trademark jury decisions and the resulting inconsistency of the evolving trademark case law around the tacking issue were eschewed in favor of upholding the perspective of the ordinary purchaser, through which the tacking doctrine is said to operate. However, the Court did reserve the tacking determination for judges in bench trials (where no jury is empaneled), and on motions for summary judgment and judgment as a matter of law.
The Court indicated that jury instructions will help guide the jury and ensure application of the correct legal standard.
Sometimes the wording of a jury instruction raises more questions than answers for the jury who must decipher the lingo. The jury instruction for “tacking” in this case was: “A party may claim priority in a mark based on the first use date of a similar but technically distinct mark where the previously used mark is the legal equivalent of the mark in question or indistinguishable therefrom such that consumers consider both as the same mark. This is called ‘tacking.’ The marks must create the same, continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked.”
What does the decision mean for brand owners? The clear takeaway is that nothing is certain as it relates to the doctrine of tacking, and whether a given jury will agree to find that the newer iteration of a trademark is tied to an older manifestation of the same mark. In cases where a jury has been demanded, it will be much more difficult to quickly dispose of a case involving the tacking issue on a motion prior to trial. This creates a landscape of increased unpredictability and expense in prosecuting or defending such cases, giving rise to a host of strategic considerations on the branding side, as well as, in pre-litigation.
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.
For more information on how you can secure trademark rights, please contact Katja Loeffelholz at [email protected].