Vine Notes: Relating wine to beer and spirits, restaurant services, even coffee and fruit
Vine Notes
Sabrina Larson is a partner at Coblentz Patch Duffy & Bass LLP. Bina Patel is an associate at the firm.
It has been said that “alcohol may not be the answer but it’s worth a shot.” In an emerging trend in trademark law, it appears that alcohol may in fact be the answer.
Wine has figured prominently in recent decisions from the United States Patent and Trademark Office, which show a growing trend toward viewing wine as related to other types of alcohol, restaurant services, and even coffee and fruit.
As a palette cleanser, we first revisit a basic tenet of trademark registration: A trademark is unregistrable if the Trademark Office concludes that it is so similar to a prior registered mark that it is likely consumers would be confused, mistaken, or deceived as to the source of the goods or services offered under the marks.
Under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), The likelihood of confusion is based on a number of factors. Two key considerations are the similarity of the marks and the relatedness of the goods and services. The goods need not be identical to find a likelihood of confusion. They need only be related and/or marketed in some manner that could give rise to the mistaken belief that they emanate from the same source.
As we pour ourselves a glass of wine and look beyond to the vineyard’s horizon, we may not be surprised to find other types of alcohol and even restaurant services within our field of vision. But do we expect our view to also encompass coffee, coffee beans, and fresh fruits and vegetables?
Indeed, the U.S. Trademark Trial and Appeals Board (the “Board”) has affirmed the Trademark Office’s refusal to register marks for wine because they are likely to be confused with similar marks for these goods and services or vice versa. The Board increasingly views wine as related to and emanating from the same source as beer and spirits as well as restaurant services. And, more recently, this trend has expanded to include coffee and fresh fruits and vegetables.
Below, we review some of these decisions, noting that they analyze only the position by the patent and trademark office on the registrability of trademarks and do not assess whether the use of those marks poses an infringement risk.
The takeaways
The rise in entities that produce wine in addition to other types of alcohol parallels a trend in recent Board decisions that have found that wine is related to other types of alcohol and even restaurant services.
The Board’s assessment of goods and services that are related to wine has extended in recent decisions to coffee-related goods and fresh fruits and vegetables.
Trademark clearance for wine trademarks should take these trends into account when assessing the registrability of a mark.
Beer and spirits
Historically, the Board has found that different categories of alcoholic beverages are not related for purposes of registering similar marks. For example, in addressing wine and vodka, in In re White Rock Distilleries, Inc., Serial No. 77093221 (Oct. 5, 2009), the Board reversed a refusal to register VOLTA for vodka, concluding that it was not likely to cause confusion with a prior registration of TERZA VOLTA for wine. The Board stated that although “the respective goods travel in the same channels of trade to the same class of purchasers, confusion is unlikely because the marks are too dissimilar and the goods have not been shown to be related.”
In recent years, the Board has shown a growing trend toward finding that different alcoholic products are related goods, while simultaneously reiterating that there is no bright-line rule that they are. In particular, the Board has been swayed by marketplace evidence, which shows that multiple types of alcoholic beverages are often offered by the same entity. The Board has also considered third-party evidence showing that manufacturers offer various types of alcoholic beverages under a single registered trademark. In re Sonoma Estate Vintners, LLC, Serial No. 85842056 (Jan. 9, 2015) (finding persuasive fifteen registrations showing that various entities registered a single mark for wine and beer). The Board has also found that alcoholic beverages are sold in the same channels of trade, such as liquor stores and restaurants, and that consumers encounter multiple types of alcoholic beverages in the same stores.
Restaurant services
In the context of restaurant services, a finding of relatedness requires “something more” than the mere fact that a restaurant serves a beverage. In Bish Wines Ltd., Serial No. 79265471 (June 1, 2021), the Board affirmed the refusal to register the mark GOLDEN EGG for wines based on a likelihood of confusion with a prior registration for the same mark for restaurant services. The Board concluded that the “something more” requirement was met because, “[i]n addition to the marks being identical and inherently strong,” the Examining Attorney submitted evidence showing that wine and restaurant services “emanate from the same source.” Specifically, the Examining Attorney identified “thirty-three third-party registrations and twenty third-party Internet websites showing that ‘wine’ and ‘restaurant services’ are often offered by the same entity.” The Board reached its conclusion despite the fact that “there [wa]s no evidence” that the restaurant at issue offered wine under its GOLDEN EGG mark.
