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North Bay Business Journal

Monday, October 28, 2013, 6:00 am

Creating, protecting wine trademark

By Robert C. Holtzapple and Racheal Turner

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    Trademarks are especially important in the wine industry. Brand names, of course, are the means by which consumers distinguish between competing goods and services. With wine, the consumer’s choice is often made based solely on the brand name or label. And trademark missteps can be expensive — rebranding, pursuing an infringer, and trying to resolve conflicts during the sale of a business are all costly and time consuming. Developing and protecting strong trademarks should therefore be considered an investment designed both to ensure that others cannot stop you from using your mark and to prevent others from using your mark or a confusingly similar mark. 

    Trademarks are brands

    According to the U.S. Patent and Trademark Office (USPTO), “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.” Wine trademarks include a winery name, vineyard designation, and label design. 

    Select strong trademarks

    When choosing a wine trademark, remember that distinctive marks are stronger and more protectable. Trademarks are evaluated on a distinctiveness continuum with the strongest being “fanciful” (“Xerox” for copiers) or “arbitrary” (“Apple” for computers). Lower on the continuum are “suggestive” marks that indirectly convey a product characteristic (“Coppertone” for sunscreen). Farther down are “descriptive” marks (“Fruity” for wine), which can only be protectable as trademarks if they become distinctive to consumers over time. At the bottom are “generic” terms (“white wine”) that can never be protected as trademarks. 

    Search for conflicting marks

    Before investing in a wine brand name, determine if it is already being used on other alcoholic beverages or related services. Federal registration is not required to obtain trademark rights; common law trademark rights are obtained simply by selling products or services bearing the mark. You can use a name already being used on different products or services (like bikes or dry cleaning), so long as consumers will not be confused into believing that there is some relationship between the two products or services. 

    To reduce attorney’s fees, you can conduct initial searches for your desired wine marks on the USPTO’s database of trademark applications and registrations (www.uspto.gov/trademarks); the Alcohol and Tobacco Tax and Trade Bureau’s COLA (Certification/Exemption of Label/Bottle Approval) database (www.ttbonline.gov/colasonline/publicSearchColasBasic.do); and the Internet. If no conflicts are revealed, your attorney will likely recommend ordering a comprehensive search report from a trademark search firm, which includes searches for look-alike and sound-alike names and for unregistered marks. 

    Consider registration

    Assuming your desired trademark has no conflicts, discuss whether to pursue federal registration with your attorney. Registration has important benefits, including a legal presumption both that you own the mark and that you have the exclusive right to use it nationwide on the registered products and services. Depending on your business, international and state registrations are also a possibility.

    If you have a long-used but never registered wine brand name, we strongly recommend obtaining legal advice regarding whether to pursue registration. No deadline exists for applying for federal registration, but the longer you wait, the greater the risk that others might oppose your application.

    Police your trademarks

    Trademark owners must protect their trademarks by monitoring for potential infringers and confronting anyone using a mark likely to confuse consumers. Monitoring is crucial because competing uses dilute your trademark rights, even if they are unknown. In addition, a potential buyer of your business may discover competing uses through due diligence and raise them to lower the purchase price. 

    If you discover someone using your mark or a confusingly similar mark, immediately contact your attorney to discuss whether to try to stop the competing use, and approaches for achieving that goal. Your trademark’s strength, your likelihood of prevailing in litigation (by proving likelihood of consumer confusion), and your litigation resources will all factor into this decision. But doing nothing in response to infringement risks diluting your mark’s distinctiveness, losing your right to exclusive use of that mark, and reducing your brand’s value. An experienced trademark attorney can explain your enforcement options, advise on the best options for you, and guide you through the process. For example, your attorney may recommend seeking a business resolution, pursuing a “trademark coexistence agreement” that allows both parties to use their marks in agreed-upon ways that avoid consumer confusion, sending a cease-and-desist letter, or even filing an infringement lawsuit. 

    Invest in your brand

    Regardless of whether your wine business is large or small, your brand is undoubtedly important to your success. After all, the best chardonnay in California will be less valuable if no one knows who is selling it.

    Robert C. Holtzapple (rholtzapple@fbm.com) and Racheal Turner (rturner@fbm.com) are business litigation partners in the San Francisco office of Farella Braun + Martel LLP (fbm.com), and both frequently assist wine industry clients with trademark matters, including creating and enforcing trademarks. Farella Braun + Martel also has an office in St. Helena.

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    Comments

    1 Comment

    1. January 7, 2014, 7:07 am

      by Julian G

      Are there trademark issues by turning used wine corks and old cigar labels into merchandise and reselling them? I see people making artsy merchandise from used containers such as cigar boxes and turning them into purses, ukuleles, etc and reselling them for profit. What are the ramifications of having to use these trademarks from other brands and selling them for your own profit? Any information would be greatly appreciated.

      Thank you.


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