winery trademarks: selecting, protecting & enforcing your ......raising capital (traditional...
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Winery Trademarks:
Selecting, Protecting &
Enforcing Your Brands
February 18, 2017
2 Winthrop & Weinstine
Entity Formation
State Licensing & Other Regulatory
Raising Capital (Traditional & Crowdfunding)
Trademark Protection & Brand Management
Distribution Agreements
Mergers & Acquisitions
Follow Us on Twitter @BrewLawyers
Representing over 75 breweries, wineries, cideries, and distilleries
3 Our Agenda
What Is a Trademark
Selecting Trademarks
Protecting Trademarks
Using Trademarks
Enforcing Trademarks
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“Unlike the supply of baby names that is replenished whenever a celebrity couple
names their kid after a direction or a piece of fruit, the number of beer names is finite.
[..] It’s difficult to select a beer name that hasn’t already been slapped on a label.”
Thrillist, July 21, 2016
“Breweries are increasingly finding themselves at odds with peers across the country,
turning to legal battles to protect beer and brewery names from trademark theft.”
Wall Street Journal, July 10, 2016
The Problem
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• Any instance where consumers are likely to be confused
by the two marks existing in the market together
• Case law says that beer is related to cider, wine, & spirits
for purposes of determining confusion
The Problem
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• Before your winery even opens, a cidery
sends you a letter asking you not to use the
name
• You release a new wine and a brewery in
Arizona contacts you to stop using a name
similar to their registered trademark
• You have an opportunity to expand into
another state, but a winery or brewery is
using the same or similar name there
The Problem
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1. Select a strong mark, while considering potential
conflicts
2. Protect your mark through appropriate filings
3. Use your mark appropriately
4. Enforce your mark thoughtfully and with purpose
The Solution
What is a Trademark?
9 What is a Trademark?
Any word, name, symbol, or device, or any combination
thereof, used by a person or entity to identify and distinguish
his or her goods from those manufactured or sold by others
and to indicate the source of the goods.
10 Types of Trademarks
WORD NON-TRADITIONAL DESIGN / LOGO
CAMUS
BAREFOOT
CHATEAU ST. CROIX
Selecting Trademarks
12
Selecting Trademarks
Does the mark fit into your overall
messaging and positioning? Does it
communicate your brand message?
BRAND MESSAGE
Distinctive Marks are more protectable
than Descriptive Marks.
TARGETED CONSUMERS Who are you targeting and are you
distinguishing yourself from others?
STRENGTH OF MARK Is the mark too similar to marks used by
your competitors? Will consumers be
confused by the mark in light of others?
AVOID INFRINGING OTHERS
13 Spectrum of Distinctiveness
Generic
More descriptive,
Less protection More distinctive,
More protection
Descriptive Suggestive Arbitrary or Fanciful
Aspirin
Elevator
Wine
Minnesota Winery
Alborino
Engel Winery
Harvest Red
Grape Smash
Xerox
Yellow Tail
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Similarity of
Marks
Trademark Infringement
Similarity of
Goods or
Services
Similarity of
Trade Channels
Fame of Prior
Mark
Use of Similar
Marks by Third
Parties
Evidence of
Actual
Confusion
Buyer
Sophistication
Other
Factors
Is there a likelihood of confusion by consumers as to source or sponsorship of the goods
15 Likelihood of Confusion
Identical mark used on similar goods
- Beer and wine
- Cider and beer
- Beer and distilled spirits
- Wine and vodka
- Blonde Ale and Shandy
16 Likelihood of Confusion
Similar mark used on similar goods
- Beer and wine
- Cider and beer
- Beer and distilled spirits
- Wine and vodka
- Blonde Ale and Shandy
17 Likelihood of Confusion
Similar mark used on “related” goods
- Beer and jellies or jams
- Brewery services and restaurant services
- Alcoholic beverages and energy drinks
18 Searching Trademarks
USPTO INDUSTRY SITES INTERNET
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Selecting a Mark
• Stronger marks are arbitrary and fanciful, weaker marks are
descriptive
• Conduct an appropriate search in the USPTO records and
a Google search for similar marks, including marks used on
ciders, beers, wines, and spirits
• Consider whether any results may affect where you
distribute or your right to use
Protecting Trademarks
21 Protection in the U.S.
USE ONLY FEDERAL FILING STATE FILING
Rights in the U.S. begin based on use of a mark in commerce.
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Option # 1: Use Only
Pros:
- No legal fees for protection
Cons:
- Rights are limited to the specific area where you have used the mark
- Must prove ownership to assert those rights \
- Cannot use ®
- May have limited ability to distribute outside of current area
Protecting the Mark
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Protecting the Mark
Option # 2: State Registration
Pros: - Rights in the entire state
Cons:
- No priority of rights outside the state, even in
a bordering state
- Must use the mark before filing for protection
- Costs money
- Cannot use ®
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Protecting the Mark
Option # 3: Federal Registration
Pros: - Can file as an intent to use application
- Nationwide priority of rights, even if you have not used it yet
- Can use the ® once registered
- Ideal for mergers & acquisitions
- Keeps distribution channels broadly open
Cons: - Costs money
- Must have use in interstate commerce
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Filing Strategy
Year-Round
Seasonal/Special
Other Indications of Source
Cidery Name / Logo
(“House Brand”)
26 Types of Trademark Filings
STANDARD CHARACTER
DESIGN
STYLIZED
27 Types of Trademark Filings
STANDARD CHARACTER
DESIGN
STYLIZED
28 U.S. Application Process
Use or Intent-to Use
Filing
About 3-6 months
after filing
Examination
Published for
Opposition
Statement of Use
Registration
Granted
Either at filing for use-based apps or to comply with statement of use requirement for apps based on an intention to use, we will need:
1. an example of use of the mark of applied for goods or services for each class; 2. date of first use anywhere on those goods and services; and 3. date of first use in interstate commerce either at filing
About 7 months
after publication
(extendible)
29 Specimens for Wines
30 Benefits of Using An Attorney
Helps keep track of deadlines for you
Experience handling refusals from the Trademark Office
Avoids pitfalls with application filing with the Trademark Office
31 Maintaining Registrations in the U.S.
Between 5th and
6th Anniversary
of Registration
Date
Declaration of Use
Between 9th and
10th Anniversary
1st Renewal
Every 10 years
after 1st Renewal
Registration
Granted
Declaration of
Incontestability
5 years of continuous
use
Further Renewals
For any of the required filings, we will need:
1. Example of use of the mark of at least one of the goods or services for each class; 2. Confirmation of use
Using Trademarks
33 Using Trademarks
Trademarks should never be used as a noun. Trademarks should
always be used like adjectives, never as nouns, in order to avoid the
mark becoming the generic term for the product or service.
Provide correct notice. Use the ® symbol next to registered marks,
the TM symbol next to unregistered marks.
“Use it or you lose it.” Trademarks not used for a period of 3 years are
legally abandoned.
Enforcing Trademarks
35 Enforcing Your Trademark
Why do I need to enforce my mark?
Scope of your protection diminishes as competitors use
similar marks on similar goods
36 Enforcement Options
Options:
1. Opposing another’s application while it is pending
2. Cancelling another’s registration after it has issued
3. Trademark infringement lawsuit for registered and unregistered marks
Standard :
- “likelihood of consumer confusion”
- Could claim fraud or that mark is generic, descriptive, or not used / abandoned
Must have priority of right in the mark and allege harm in the other’s use or
registration of the mark
All of these typically begin with some discussions and a “cease & desist” letter
37 Settling Disputes
There are options that keep your rights broad and allow for others to use
similar marks
Type of product being used with the mark
Territorial limitations
Seasonal v. Flagship
Time limitations
Licensing arrangements
Assignment of the mark
Collaborative agreements
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Questions? Martha - [email protected]
Zach - [email protected]
Martha Engel
[email protected] 612-604-6470
Twitter: @Martha_Engel