Winery Trademarks: Selecting, Protecting & Enforcing Your ......Raising Capital (Traditional & Crowdfunding) Trademark Protection & Brand Management Distribution Agreements Mergers

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

4

“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

6

• 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

14

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

23

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 ®

24

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

25

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

38

Questions? Martha - mengel@winthrop.com

Zach - zrobins@winthrop.com

Martha Engel

mengel@winthrop.com 612-604-6470

Twitter: @Martha_Engel