Artisan Spirit: Spring 2016

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surnames, including MCDONALD’S, FORD and WRIGLEY. Owners of well-known name marks may prevent others with the same name from using or registering that name as a trademark. You can imagine you might face a problem with opening a restaurant using any form of the name “McDonald’s,” even if “McDonald” is your last name. Thus, while it is possible to acquire trademark rights to a brand comprised of a family name, business owners should conduct a clearance search (see next section) to make sure that their name has not already been used and registered by another party in their field of use. Distillers should also use caution when incorporating THE geographic terms into U.S. their marks. The U.S. Patent and PATENT AND Tr a d e m a r k TRADEMARK Office (PTO) OFFICE WILL NOT will not REGISTER A MARK register a THAT, WHEN USED ON mark that, when used OR IN CONNECTION on or in WITH SPIRITS, connection with spirits, IDENTIFIES A identifies a GEOGRAPHIC PLACE geographic OTHER THAN THE place other ORIGIN OF THE than the origin of the goods. For GOODS. example, you should not call your product ALL AMERICAN VODKA if your product is distilled in Canada. Not only does such a name risk disapproval by the PTO, it also puts your ability to obtain a certificate of label approval (COLA) from TTB in jeopardy. And even if you can somehow get such a mark past the PTO and TTB, you would still face the prospect of potential false advertising lawsuits under the federal Lanham Act and state false advertising and unfair competition laws. Even geographic terms that accurately reflect the origin of your goods will likely be deemed merely descriptive by the PTO, and will not be protectable absent evidence of secondary meaning. Thus, give careful consideration to whether you want to pick a


mark that has geographic significance. From a legal perspective, your rights to the mark will be limited, as you cannot prohibit others from using a geographic term to accurately identify the geographic origin of their goods. From a larger business standpoint, consider whether using a geographic indicator may restrict your audience to a particular market. For example, the name IDAHO VODKA CO. may not have nationwide or foreign appeal, despite the clever rhyming. Ultimately, the primary reason to have a trademark is to distinguish your company’s offerings from those of a competitor. That is why adopting a distinctive trademark is highly recommended. Others are more likely to use a descriptive trademark without permission, and you will likely have a limited ability to stop others from using your trademark in a purely descriptive manner. So, when selecting trademarks, we recommend coming up with a number of options for consideration, with an emphasis on fanciful, arbitrary, or suggestive marks.

CLEAR THOSE MARKS! Your team has finally come up with the perfect trademark. You are so excited that you call up legal and yell FILE! FILE! FILE! You patiently wait for good news when—cringe— the PTO rejects your application because it finds the same or similar trademark in your field of use, with senior (i.e., prior) rights. You also might receive a demand letter from a senior rights holder demanding you immediately and permanently refrain from any use of, or plans to use, your perfect mark. We write those letters, so we know. Upfront due diligence could have avoided the foregoing scenario, or at least an unpleasant surprise. Engaging in trademark clearance is simply part of good industry citizenship. Regardless of whether you are a seasoned distiller or are new to the industry, everyone feels financial pain, and throwing away money and time on a brand you eventually have to abandon cuts deep. The purpose of trademark clearance is two-fold. First, you avoid infringing prior rights by assessing whether your proposed mark is even available for use. A clearance analysis will compare your proposed mark

to those that came before you and assess whether your mark will invite rejection from the PTO and/or objection from third parties. Trademark clearance can also help you determine whether your mark is distinctive. If prior records show you that marks identical or very similar to yours were rejected by the PTO as being merely descriptive or generic, then your application will likely meet a similar fate. When engaging in trademark clearance, do not limit your clearance searches only to spirits in International Class 33. In analyzing whether a proposed trademark is “confusingly similar” to an existing registration or prior pending application, the PTO has found beer to be “related” to other alcohol beverages—even though the PTO classifies beer separately from other alcohol beverages. In addition, the PTO and the U.S. Court of Appeals for the Federal Circuit (the federal court that hears appeals arising from PTO proceedings) have held alcohol beverages to be “related” to restaurant services in view of evidence that restaurants frequently offer their own private label wines, and brewpubs are restaurants that offer their own private label beers. Similar to brewpubs, the restaurant/ distillery movement appears to be gaining steam, with restaurants distilling their own spirits and distilleries serving food. Thus, the PTO would likewise have evidence to support a conclusion that spirits and restaurant services are “related” AS for a likelihood of confusion analysis. Therefore, THE when clearing CLEARANCE your marks, we PROCESS CAN recommend casting a wide TAKE SOME TIME, net. WE RECOMMEND We also GIVING YOURSELF recommend ADEQUATE LEAD TIME expanding y o u r BEFORE YOU NEED clearance TO COMMIT TO A searches MARK AND GET LEGAL b e y o n d marks that INVOLVED EARLY ON are filed or IN THE SELECTION registered PROCESS. with the PTO. WWW.ARTISANSPIRITMAG.COM