The folks at the U.S. Patent & Trademark Office (“PTO”) received nearly half a million trademark applications last year. These applications included thousands of new filings by breweries, vineyards, wineries, and distilleries. Here are five important lessons we learned from last year’s decisions by various trademark tribunals about protecting and registering your mark in the beer, wine or spirits industries.
First Lesson: All Alcoholic Beverages are Related
While it is not a per se rule, the PTO is taking the position that all alcoholic beverages are related. Relatedness of products is a major factor in determining whether two trademarks conflict. Last year’s cases showed that courts as well as the Trademark Trial and Appeal Board (“TTAB”) continued following this trend.
In The Bruery, LLC, Serial No. 85656671 (September 24, 2014) [not precedential], the TTAB affirmed a Section 2(d) refusal to register the mark “5 GOLDEN RINGS” for “beer; malt liquor,” finding the mark likely will cause confusion with the registered mark “GOLD RING” for wines. The Board noted that it is not uncommon for craft/microbreweries to also produce wine, sometimes under the same house mark. In addition, some third-party trademark registrations claimed both beer and wine. Therefore, the Board concluded that the goods were “closely related.”
A California court found that energy drinks and wine were related. In E. & J. Gallo Winery v. Grenade Beverage LLC [No. 1:13-cv-00770 (E.D. Cal. Aug. 15, 2014)] , the court held that “GALLO” (for wines) and “EL GALLO” (for energy drinks) were similar trademarks and that the products were related. The court noted that “EL GALLO was promoted as a mixer for alcoholic drinks” (although we doubt that wine and energy drinks were ever mixed together). The relatedness of the goods and the strength of the GALLO mark led to a victory for E&J Gallo.
And just last week, the TTAB found wines related to a “mixed beverage containing alcohol and fruit juice.” In In re 8 Vini, Inc., Serial No. 85857391 (January 16, 2015) [not precedential], the Board affirmed the refusal to register the mark “MASQUERADE” for “sparkling wines; wines,” finding the mark confusingly similar to the registered mark “MASCARADE” for “mixed beverage containing alcohol and fruit juice.”
The U.S. Court of Appeals for the Federal Circuit, however, drew a line in December, holding that apple juice and wines are not related for purposes of likelihood of confusion. The Court found that the mark “DOMAINE PINNACLE & Design” for “apple juices and apple-based non-alcoholic beverages” [DOMAINE disclaimed] was not confusingly similar to the marks “PINNACLES” and “PINNACLE RANCHES” for wine [RANCHES disclaimed]. In re Franciscan Vineyards, Inc., Appeal No. 2014-1269 (Fed. Cir. December 9, 2014) [not precedential].
If you encounter an identical mark owned by a producer of a different type of alcohol, sometimes the easiest path through the Trademark Office is a consent agreement resulting from a friendly chat with the owner. This tactic can backfire, however, if the producer (who may not have been aware of your brand before) demands you cease use of the mark. Therefore, seeking legal guidance before approaching owners of potentially conflicting marks is advisable.
Second Lesson: If Your Mark Describes Anything About Your Product, Expect a Refusal
The most common hurdle for alcohol-related applications in 2014 appeared to be descriptiveness. For example, the TTAB found that “BLENDS” was merely descriptive for “marketing, advertising and promoting the sale of wine,” even though the applicant argued that “blends” has many different meanings. In re Ren Acquisition, Inc., Serial Nos. 85787527 and 85787531 (October 3, 2014) [not precedential].
The Board also found that the mark “GOOD BOX” was descriptive for boxed wine, over the applicant’s objection that the wine itself wasn’t boxed; its packaging was. The Board found that boxed wine was a type of wine, and “GOOD BOX” described the main feature of that product. In re Switzerly, Inc., Serial No. 85720234 (August 20, 2014) [not precedential].
The mark “N2WINES” was also deemed descriptive for “wine sold in kegs,” where the wine was pushed through a nitrogen-based tap (N2 is the symbol for nitrogen). In re N2Wines LLC, Serial No. 85680969 (April 15, 2014) [not precedential].
And the mark “TEA QUILA” was found to be merely descriptive for “alcoholic beverages except beer.” The Examining Attorney had submitted Internet evidence that the term “teaquila” was used as the name of a drink made with tea and tequila. ).” In re IV Science, LLC d/b/a Green & Co., Serial No. 85609906 (June 18, 2014) [not precedential].
But not all descriptiveness challenges survived. In a somewhat hilarious attempt to cancel the mark “NAUGHTY GIRL” for wine, the petitioner claimed that it was descriptive because drinking registrant’s wine, which has a slightly higher alcohol content than some wines, will make women “naughty.” The Board was not amused and rejected the petition to cancel. Alvi’s Drift Wine International v. von Stiehl Winery, Cancellation No. 92058100 (September 12, 2014) [not precedential]. (The petitioner had filed for the mark “ALVI’S DRIFT NAUGHTY GIRL” for wine and had received an office action citing the registered mark. Presumably, the petitioner was trying to cancel the mark that blocked its own application.)
Descriptive marks are understandably attractive because they immediately tell your customers something about the product: where it comes from, who brewed it, what it tastes like, what it looks like. But remember that the strongest and most protectable marks are words that are either coined terms or have no connection to the products (e.g., “YELLOW TAIL” or “BAREFOOT”). In addition, with thousands of new applications being filed in the beverage field each year, descriptive marks are more likely to bump up against owners who are claiming that word. Therefore, choosing a unique mark will not only be more protectable at the outset, it is less likely to infringe the rights of competitors.
Third Lesson: Beware the Foreign Mark
Two seemingly conflicting PTO rules affect foreign marks. On one hand, under the doctrine of foreign equivalents, examiners will translate a mark to determine whether it is likely to be confused with a prior registration. For example, if a new application is the mark “REINA,” examiners will search for “REINA” and for “QUEEN” (the English translation of the Spanish word “reina”).
On the other hand, foreign marks are compared with any other marks that contain the same letters, even if the translated meanings of the respective marks are different.
An example of the first rule is In re The Biltmore Company, Serial No. 85561663 (November 21, 2014) [not precedential]. There, the TTAB affirmed the refusal to register the mark “CENTURY” for wine, finding it likely to cause confusion with the registered mark “SECOLO” for table wine. (The English translation of the Italian word “secolo” is “century.”) The applicant argued that wine consumers are accustomed to seeing foreign words on wine labels and therefore would not translate “secolo” into “century.” The Board rejected this argument.
An example of the second rule is Real Sitio de Ventosilla, S.A. v. Pagos del Rey, S.L., Opposition No. 91201741 (August 22, 2014) [not precedential]. There, the applicant’s mark was “PAGOS DEL REY” for wine. The opposer owned the registered mark “PradoRey” (stylized) for wine. Applicant argued that Spanish-speaking Americans would understand the different meanings of the two marks. However, the Board held, even if Spanish consumers could distinguish the marks, non-Spanish speakers must also be considered, and they would find the marks similar in appearance and sound.
Therefore, when clearing your foreign mark, you must consider both the foreign word and its English translation.
Fourth Lesson: Family Pride Does Not Entitle You to a Trademark
Name marks are common in the alcohol industry since well-known family names often come with commercial recognition (think “GALLO”). However, just because your name happens to be Fred Gallo does not mean you can begin selling alcohol using your last name.
The Trademark Office grappled with this issue in at least two alcohol-related cases last year. In In re Barton, Serial No. 85554813 (November 7, 2014) [not precedential], Joseph Barton applied to register “BARTON FAMILY WINERY” for “wine,” but the PTO refused registration based on the registered mark “THOMAS BARTON” for “alcoholic beverages, namely, wines.” The Board affirmed, noting that “consumers familiar with Registrant’s wines are likely to believe that Registrant is now producing a line of wines bearing only its surname, and that Registrant is designating its own ‘Barton family’ as the maker of the wines produced under the mark “BARTON FAMILY WINERY.” The fact that the cited mark also includes the name “THOMAS” does not sufficiently distinguish it from Applicant’s mark.”
In a not-yet-settled case, a family dispute over the “SCHLAFLY” mark heads to trial before the TTAB. In Dr. Bruce S. Schlafly and Phyllis Schlafly v. The Saint Louis Brewery, LLC, Opposition No. 91207224 (ongoing), the Saint Louis Brewery applied to register SCHLAFLY, the brewery’s house brand, for beer. The brewery, which is operated by Tom Schlafly, has been selling beer under the mark since 1991. Phyllis Schlafly, Tom’s aunt and a nationally known conservative activist, opposed the application because, she claims, the surname is associated with her. In her brief, Phyllis Schlafly says, “[i]n connection with [Schlafly’s] usage as a surname, it has the connotation of conservative values, which to millions of Americans (such as Baptists and Mormons) means abstinence from alcohol.” The case is currently suspended for settlement talks.
When using name marks, it helps to use an individual’s first and last names to distinguish the mark from any prior similarly named marks. Remember, too, that name marks are not inherently distinctive if they have not been in use for at least five years, so be prepared to either register on the Supplemental Register or prove “acquired distinctiveness.”
Fifth Lesson: The Trademark Office is Sometimes a Closed Universe.
The true test for likelihood of confusion often hinges on whether two marks connote the same “commercial impression.” A mark’s commercial impression is determined by its appearance, sound and meaning, as perceived by the average consumer.
In September, the Trademark Office found that “SUNNY HAZE” for beer was likely to be confused with the registered mark “PURPLE HAZE” for beer. Abita Brewing Company, LLC v. Mother Earth Brewing, LLC., Opposition No. 91203200 (September 11, 2014) [not precedential]. The Board found that “haze” had industry meaning, sometimes referring to the turbidity of beer. The obvious association that many consumers would make with the PURPLE HAZE mark is, of course, Jimi Hendrix. But the Board noted that “at least those consumers who view the mark as having a descriptive feature and do not make the Jimi Hendrix association would see the marks PURPLE HAZE and SUNNY HAZE as more similar than they are different, as both identify a color or mood and both share the word HAZE.”
When selecting a mark based on a pop culture reference (or when trying to avoid such a mark while naming your product), remember that the literal elements of the mark can sometimes outweigh the cultural reference.
The trademark lessons that 2014 provided us do underscore the many potential pitfalls when applying for a trademark registration. No doubt, that’s one reason why a recent study found that having an experienced trademark attorney help you file an application gives you an 83 percent chance at success, compared with just a 57 percent of success if you apply pro se. If you have your heart set on a particular mark, the most important call you make may be the one to your trademark attorney.