be considered complementary to alcohol beverages) and know that a similar mark for a separate alcohol product may, but not always, block registration of the mark. Distillers should investigate the circumstances of the use of the mark (e.g., is the wine only sold at the winery where made, whereas the spirit product is sold at retail) to understand the risks of using that mark and of refusal of registration by the USPTO. The relatedness of alcohol products also extends to issues of registering trade dress (the PRODUCT packaging, shape, or design of a product). The TTAB recently affirmed the refusal to PACKAGING register a bottle design for “mezcal,” TRADE DRESS, stating that the distinctiveness of the SUCH AS BOTTLES, bottle design should be assessed in comparison to all distilled CAN BE INHERENTLY spirits and not just other mezcal DISTINCTIVE, products. The proposed bottle MEANING THAT mark can be seen to the right. THE APPLICANT Product packaging trade dress, such as bottles, can DOES NOT HAVE TO be inherently distinctive, SHOW ACQUIRED meaning that the applicant DISTINCTIVENESS does not have to show acquired distinctiveness to TO REGISTER register the mark. There are a
number of factors the TTAB considers when assessing inherent distinctiveness, namely (1) if the mark is a common shape or design, (2) if the design is unique in the field, and (3) if the design would be viewed by consumers as mere ornamentation. In this case, the applicant argued that the field of comparison should be limited to other mezcal products only, but the TTAB disagreed, finding the “distilled spirits market” to be more appropriate. In comparing the proposed trade dress with other alcohol beverage product bottles, the TTAB found that while this design may be the only one which incorporates this unique combination of elements (e.g., spherical stopper, ribbing, etc.), the individual elements were prevalent among alcohol beverage bottle shapes. Accordingly, the proposed mark was not inherently distinctive, and the TTAB affirmed the refusal to register the mark.
Mary Hallerman is a partner in the law firm of McDermott Will & Emery LLP, based in the Firm’s Washington D.C. office. She focuses her practice on trademark, false advertising, and copyright litigation and has represented numerous beer and alcohol companies in cases in both federal court and the Trademark Trial and Appeal Board. Eleanor (Ellie) Atkins is an associate in the law firm of McDermott Will & Emery LLP, based in the Firm’s Washington D.C. office. She works in the Intellectual Property Group, where her practice for beer and alcohol companies focuses on the selection, registration, and enforcement of trademarks.
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