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TRADEMARK TIPS FOR SMALL DISTILLERS BY MARC E. SORINI AND BESS MORGAN

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hat’s in a name? (Or a slogan, logo, symbol or other source-identifying device?) Well, turns out a lot. While the craft spirits industry is a tight knit and collegial community, businesses must strive to create a unique and distinctive place in the market that makes their products stand out from the rest. For small distillers, who may have leaner advertising budgets than the spirits giants, one effective way to plant your flag in the ground and say “This is who we are, come and join us!” is through trademarks. A trademark is any word, name, symbol, logo and/or device that identifies the goods and services of one party, and distinguishes such offerings from those of others. Below we provide some tips and recommendations for small distillers to consider when selecting and protecting trademarks.

THERE IS NO BENEFIT IN BEING GENERIC: SELECT DISTINCTIVE MARKS One of the most exciting, and often head-scratching, parts of establishing and developing your business is selecting trademarks. Marketing considerations are usually top of mind when selecting trademarks, and rightfully so. Trademarks establish and communicate your business identity. Is your distilling philosophy traditional and sophisticated? Modern and progressive? Off-the-wall and lighthearted? Trademarks reveal your company’s personality, and that personality will attract WWW.ARTISANSPIRITMAG.COM  

Marc E. Sorini is a partner in the law firm of McDermott Will & Emery LLP, based in the Firm’s Washington D.C. office. He leads the Firm’s Alcohol Regulatory & Distribution Group, where he concentrates his practice on regulatory and litigation issues faced by supplier-tier industry members. His practice for distillers includes distribution agreements, distribution counseling and litigation, product formulation, labeling, promotional compliance, compliance strategy, and federal and state tax and trade practice enforcement defense.

c o n s u m e r s who share, or are attracted to, your point of view. While marketing considerations are significant when creating brand identity, just as much emphasis should be placed on selecting trademarks that will be considered strong in the eyes of the law. Certain types of trademarks are inherently “strong” and afford broader legal protections. Other marks are “weak” and afford less-extensive legal protection, or none at all. The basic trademark categories are:

Fanciful: completely unique and madeup terms with no known meaning other than as a trademark. Examples are PEPSI, KODAK and XEROX. Fanciful marks are considered the strongest type of trademark, meaning they are entitled to a more extensive scope of protection.

Arbitrary: a mark made up of one or more “real” words with a commonly understood meaning, but the words have no relationship to the goods or services with which they are used. Examples are OLD CROW whiskey, and APPLE computers. These marks are also considered strong.

Suggestive: marks that hint at a quality or characteristic of the relevant goods or services, but require some imagination, thought or perception to make the connection. Examples are CHICKEN OF THE SEA for tuna or AIRBUS for airplanes. Suggestive marks are considered weaker than fanciful or arbitrary marks, but can acquire strength over time.

Descriptive: words or phrases that merely describe an ingredient,

characteristic, quality, function, feature, purpose, or use of the goods or services with which they are used. Examples are AMERICA’S RUM, EXPERTLY DISTILLED, PERFECT VODKA. Descriptive marks are only protectable if they have acquired “distinctiveness” or “secondary meaning” to the public through substantially exclusive and continuous use for a considerable amount of time.

Generic: a word that is used to refer to the class or type of goods or services. Examples include vodka, rum, whiskey, and tequila. Generic terms are not protectable as trademarks because they must be available for others to use.

A Clients often ask whether it is TRADEMARK possible to use IS ANY WORD, their surname NAME, SYMBOL, as, or as part of, a LOGO AND/ trademark. OR DEVICE THAT Generally, IDENTIFIES THE if a term is GOODS AND SERVICES “primarily merely a OF ONE PARTY, AND surname,” DISTINGUISHES meaning it SUCH OFFERINGS does not have a recognized FROM THOSE meaning other OF OTHERS. than as a surname, that name is not protectable as a trademark unless and until it has achieved secondary meaning as an indicator of source for the relevant goods or services. Of course, many surnames do achieve secondary meaning in the eyes of the public, and some very famous trademarks are 27

Artisan Spirit: Spring 2016  

The magazine for craft distillers and their fans.

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