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CIDER WEEK: So You Want To Start Your Own Cidery (Session 2)

Our first Cider Week session event sold our for October 25th, so we added a second event on Saturday, October 29th. Please see below for more information. 

On October 29th at 6:00 PM, I will be speaking at Wassail for New York City Cider Week. The event is So You Want To Start Your Own Cidery, where I will discuss the legal elements of applying for a cider license with the New York State Liquor Authority (as well as for a federal license through the TTB). Also present will be Seth Jones, owner of East Hollow Cider and Mead, who will talk about how he became interested in apples and cider as well as discuss his trials and tribulations in obtaining a cidery license.

For more information or to purchase a ticket, please visit Cider Week: So You Want To Start Your Own Cidery. Tickets are $25.00 per person and will include a tasting. Wassail is located at 162 Orchard Street in New York, New York.

For more information on wine or alcohol law, or permits, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice

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CIDER WEEK: So You Want To Start Your Own Cidery

CIDER WEEK: So You Want To Start Your Own CideryOn October 25th at 8:00 PM, I will be speaking at Wassail for New York City Cider Week. The event is So You Want To Start Your Own Cidery, where I will discuss the legal elements of applying for a cider license with the New York State Liquor Authority (as well as for a federal license through the TTB). Also present will be Seth Jones, owner of East Hollow Cider and Mead, who will talk about how he became interested in apples and cider as well as discuss his trials and tribulations in obtaining a cidery license.

For more information or to purchase a ticket, please visit Cider Week: So You Want To Start Your Own Cidery. Tickets are $25.00 per person and will include a tasting. Wassail is located at 162 Orchard Street in New York, New York.

For more information on wine or alcohol law, or permits, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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the beach house wine by douglas green trademark registration likelihood of confusionA recent application before the United States Patent and Trademark Office sought to register the mark The Beachhouse, A Wine by Douglas Green (in standard characters) for wines in International Class 33 on the Principal Register. See In re LDGB (PTY) LTD, Serial No. 85944842 (April 29, 2016) [not precedential].  The application for registration was originally refused by the Examining Attorney under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark resembled the mark BEACH HOUSE WINERY in standard characters (“winery” disclaimed), previously registered for wine in International Class 33, and was likely to cause confusion. Applicant appealed to the Trademark Trial and Appeal Board and requested reconsideration.

The Board noted that Applicant’s and Registrant’s goods are identical (i.e., both wine) and thus the Board presumed that the channels of trade and classes of purchasers are the same. Id. at 3. This thus strongly supports a finding of likelihood of confusion with respect to the likelihood of confusion analysis. 

The Board then looked to the similarity or dissimilarity of the marks in their entireties with respect to appearance, sound, connotation, and commercial impression. When goods are identical, the degree of likelihood of similarity required to find a likelihood of confusion declines. Id. at 3–4. The Board noted that both Applicant’s mark and Registrant’s mark contained the term BEACHHOUSE (or similar) as shared terms, which were also the first words and thus enhanced the similarity between the marks. Id. at 5. The Board thus found the marks to be visibly and aurally similar because BEACH HOUSE (whether one or two words) is the first and dominant portion of each mark. Additionally, the marks incorporated “wine” or “winery” as descriptive terms which the Board found contributed to a similar connotation and overall commercial impression. Id. 

The Board did not agree with Applicant’s argument that “A Wine By Douglas Green” significantly distinguished Applicant’s mark from Registrant’s mark in the minds of consumers. Instead, the Board thought consumers were likely to believe Applicant’s mark was a variation of Registrant’s mark “pointing to a common source.” Id.

Applicant further argued that the “DOUGLAS GREEN” mark is well-known and that consumers who spot a wine with the mark “The Beach House, A Wine By Douglas Green” will recognize Douglas Green as the brand and will associate the Beachhouse mark solely with Douglas Green. The Board noted that “as a general rule, the addition of a house mark to one or two otherwise confusingly similar marks will not serve to avoid a likelihood of confusion.” Id. at 6. The Board further reasoned that, to the extent Applicant was trying to “assert rights in a family of Douglas Green-formative marks, the family of marks doctrine is not available to an applicant seeking to overcome a likelihood of confusion refusal in an ex parte proceeding.” Id. at 7. Instead, the focus must be on the mark which the Applicant is seeking to register, not other marks that the Applicant may be used or may have registered. Id.

For those reasons, the Board foudn that Applicant’s mark was similar to Registrant’s mark and that the first du Pont factor also supported a finding of likelihood of confusion. 

The Board then examined Applicant’s final argument. Applicant maintained that it would be inconsistent to refuser registration of its mark while allowing the Registrant’s mark to coexist with a third-party registration for BEACH HAUS for beer in International Class 32. Board notes that the registration for BEACH HAUS was cancelled per 15 U. S. C. § 1058 during the pendency of this actual appeal. The Board noted, however, even if that registration were subsisting, it would not change the outcome here as each case must be decided on its own merits.

For the above reasons, the Board thus found that Applicant’s mark was likely to cause confusion with Registrant’s mark when used in association with wines and refused to register Applicant’s mark for The Beachhouse, A Wine by Douglas Green. 

For more information on wine or alcohol law, or trademarks, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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On Reserve Exclusive Trademark Package Through 2016


On Reserve Special 2016 Trademark PackageOn  Reserve
is excited to announce an exclusive trademark package through Lehrman Beverage Law, PLLC. The package will extend to new clients and trademark registrations through the end of 2016. For more information, please contact us at trademarks@bevlaw.com or via phone at 202-449-3739 ext. 4. Please mention On Reserve Special 2016

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americana trademark law alcohol beveragesA recent application before the United States Patent and Trademark Office sought to register the mark Old Americana (in standard characters) for alcoholic beverage except beers in International Class 33. See In re Luca Mariano Distillery LLC, Serial No. 86293520 (June 23, 2016) [not precedential].  The application for registration was originally refused by the Examining Attorney under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark resembled the mark AMERICANA registered for vodka in International Class 33 and was likely to cause confusion. In addition, the Attorney refused registration under Section 6 of the Trademark Act based on Applicant’s failure to comply with requirement to disclaim the word “OLD.” Applicant appealed to the Trademark Trial and Appeal Board and requested reconsideration.

The Board started with a discussion of an evidentiary issue with respect to Applicant including new evidence that was not introduced prior to the Appel, to which the Examining Attorney objected. The Board sustained the Attorney’s objections, reasoning that the record in an application should be complete prior to filing an appeal and untimely evidence is generally not considered. Id. at 3–4.

The Board went on to discussion the disclaimer requirement, which is codified at 15 U.S.C. § 1056(a) and specifically requires the following:

The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.

In the past, the Board has found that if an Applicant does not comply with the disclaimer rule, the Examining Attorney may refuse registration of the entire mark. Id. at 4. In particular, merely descriptive terms are subject to disclaimer if the mark in which they appear is otherwise registrable. The Trademark Act considers a term merely descriptive if it “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods with which it is used.” Id. at 5. Examining Attorney originally required Applicant to disclaim “OLD” in the mark Old Americana arguing that the term “Old” is merely descriptive of the Applicant’s goods (i.e., “old” means “advanced in years” and describes the goods at issue because “alcohol beverages” includes aged alcohol beverages). In a later Office Action and in the Appeal Brief, Examining Attorney changed his reasoning and pointed to Applicant’s website, which indicates the brand is dedicated to bringing back Prohibition-era recipes and have been family secrets since 1914. Examining Attorney went on to explain that “old” can also be defined as “of, relating to, or originating in a past era” and thus described Applicant’s goods. Id. at 5–6. Applicant maintained that the term “old” is suggestive, not descriptive. The Board found that members of the purchasing public would not equate “old” with “aged” when they encountered the mark “Old Americana” at an alcohol beverage store. Id. at 7.  The Board went on to analyze the differences between “old” and “aged,” noting that “aged” conveys a positive attributeof a barrel-aged whiskey or a fine wine and “old” suggests that a product has exceeded its expiration date and does not describe a characteristic of the goods. In the Board’s view, “Old” modified the noun “Americana” and “enhances that connotation by alluding to bygone American culture” and “indirectly evok[es] in purchasers’ minds a nostalgic remembrance of a past era.” Id. at 8. The Board thus found this use to be “the essence” of a suggestive term and reversed the disclaimer requirement. Id.

The Board next discussed whether or not Applicant’s mark was likely to be confused with Registrant’s mark for AMERICANA. The Board founds that the goods were legally identical (vodka and alcohol beverages except beers), thus there was no limitation to the channels of trade or classes of purchasers and it was presumed that Applicant’s and Registrant’s goods moved in all channels of trade normal for those goods. The du Pont factors thus weighed heavily in favor of finding a likelihood of confusion. Id. at 10.

Next, the Board looked to compare the marks and to determine the similarity or dissimilarity of the marks in their entireties. Applicant argued that its beverages are sold under the brand Luca Mariano, of which Old Americana is merely a sub-brand; that the design portion of Registrant’s mark distinguishes the two marks, that the prefix “Old” in Applicant’s mark differentiates the marks, and that the shared term (“Americana”) is weak. Unfortunately, the Board found these arguments to be weak. The Board recognized that even if Luca Mariano is the “house brand,” the application at issue is with respect to the registration of “Old Americana,” which would allow Applicant to use that mark by itself. Id. at 11. Further, the stylization of Registrant’s mark did not significantly alter the appearance or pronunciation, nor would it impact how consumers pronounced the term. Id. at 12. Further, “Applicant’s addition of the prefix OLD to AMERICANA does not suffice to dispel confusion between the two marks.” Id.  Further, Applicant failed to demonstrate that Registrant’s mark is weak as the listing of third-party AMERICANA marks was not made of record and lacked probative value (as previously noted in the Opinion, about 30 of the marks referencing AMERICANA were not related to the goods at issue). Id. at 13. Therefore, the Board concluded, this du Pont factor weighed in favor of finding a likelihood of confusion.

The Board thus found that the marks are similar and used on legally identical goods which as presumed to move through the same trade channels to the same classes of purchasers. The Board found that Applicant’s and Registrant’s marks so resembled one another to be likely to cause confusion or mistake under Section 2(d) of the Trademark Act. Therefore, the Board affirmed the refusal to register OLD AMERICANA on the ground of likelihood of confusion under Trademark Act Section 2(d) (but the Board did reverse the requirement of a disclaimer of OLD).

For more information on wine or alcohol law, or trademarks, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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A recent application before the United States Patent and Trademark Office sought to register the mark Tres Vidas (with a tree) for tequila and tequila infused with vitmanis in International Class 33. See In re Tres Vidas Organic, Inc., Serial No. 86609789 (August 5, 2016) [not precedentialTres Vidas USPTO liquor trademark spirits trademark law].  The English translation is “three lives.” The application for registration was originally refused by the Examining Attorney under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark (when applied to the identified goods) resembles a prior registration for DOS VIDAS for tequila and thus likely to cause confusion, mistake, or to deceive. The mark in the DOS VIDAS registration also contained a translation indicating that it translated to, “two lives.”

In the Board’s short likelihood of confusion analysis, it considered the goods/channels of trade and the similarity/dissimilarity of the marks. With respect to relatedness of the goods, the Board easily found that the goods were “identical-in-part and legally identical.” Id. at 3. Therefore, the Board presumed that the channels of trade and classes of purchasers were the same. Applicant did not dispute this and the Board found that these particular factors weighed heavily in favor of finding a likelihood of confusion.

Next, the Board considered the similarity and dissimilarity of the mark. In this type of analysis, the Board looks to the appearance, sound, connotation, and commercial impression of the marks in their entireties. The test is not whether the marks can be distinguished from a side-by-side comparison but instead whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods is likely to result. In this type of analysis, the focus is on the average consumer who retains a general rather than a specific impression of the marks. When, as in this case, the goods are identical in part, the degree of similarity between the marks that is required to support a likelihood of finding of likelihood of confusion is less than if the goods were no identical.

The Board recognized that, while Applicant’s mark contained a tree, in instances where there is both a word mark and a design mark, the words are generally given greater weight because such would be used by the consumer to request a product. Id. at 5. “With this in mind, we find that, on their face, the literal portions of the marks are similar in sight and sound in that they share the term ‘VIDAS.’ Applicant does not contest that its mark means ‘three lives’ whereas the mark in the cited registration means ‘two lives.’” Id. 

Applicant creatively argued that the marks had more “mystical” meanings and that Tres Vidas would be understood as referring to “Mesoamerican religious and cultural concept of three worlds where the tree acts as a symbol for life.” Id. With the support of several third-party resources, Applicant argued that the commercial impression of Tres Vidas would be understood by consumers to refer to Mesoamerican concept of cycle of life, death, and regeneration (along with the tree design). Id. at 6. The Board noted that this logic failed because the mark itself was not “Tree of Life” to “Axis Mudi” or similar. On top of that, the Board observed there was no evidence submitted by Applicant that suggested consumers are aware of Mesoamerican theology or that they would associate Applicant’s mark with a specific cultural or religious concept. Instead, the Board reasoned that consumers would associate the mark with “three lives” and the tree as a living tree associated with lives or living. Id.

Applicant also argued that the registered mark (Dos Vidas) meant double life and not just “two lives,” but the Board rejected this argument because no evidence was presented to support this. Therefore, the Board reasoned that the commercial impressions of the marks were similar and that consumers would expect Applicant’s Tres Vidas mark and design for tequila to be an extension of or associated with Registrant’s Dos Vidas tequila. The Board found the marks to be similar in sight, sound, connotation, and commercial impression and thus in favor of finding a likelihood of confusion. The Examining Attorney’s refusal to register Applicant’s mark  under Section 2(d) of the Trademark Act was affirmed.

For more information on wine or alcohol law, or trademarks, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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Amending the TTB Basic Permit: Overview, Options, and Tips

You’ve finally gone through that grueling process of getting licensed on the TTB level and you have all your formulas and COLAs in hand. Production is taking off and business has been better than ever. While you’re glad to see such great success, production space is limited and you are in dire need of expansion. However, the thought of going through the permitting process again is daunting—and you are not quite sure you want to have two separate DSP permits. Luckily, you’ve heard something about TTB amendments, but you do not know what this entails.

Many types of amendments are available to TTB-regulated businesses, some of which may be unique to the type of permit your company has with TTB. This article discusses several of the main types of amendments that may be an option to your TTB-permitted business.

1. Paper Versus Online

The very first question you should ask is the following: Was my company’s original federal basic permit application filed with the TTB via paper or online (i.e., through Permits Online or PONL)? The answer to this question will ultimately impact how an amendment application can be filed.

If the original permit was filed several years ago, it was most likely filed through a paper application. TTB’s National Revenue Center (NRC) is in the process of transferring paper applications to its online system. However, as this appears to be a very ambitious task and may entail reviewing many hundreds of papers or documents per permittee, the agency has not transferred all permits to its PONL system. Yes, even this day and age, not all paper permits have been converted to PONL; TTB maintains that it is an overwhelming process.

If you’re uncertain if your paper application has been transferred to TTB’s online system, it is best to give NRC a call. Note that the permit filing is different from submitting labels or formulas to TTB via the COLAs Online or Formulas Online platforms—if you are able to submit label and formula applications online, this does not necessarily guarantee that permit amendments can also be done online. However gruesome the conversion process may be, there is a possibility (albeit small) that your paper permit may have been converted to the online system, which is why it is best to check in with NRC.

If it turns out that your permit has not been transferred, then you must file paper application for amendments. The processing time for paper applications is generally longer than that for electronic applications.

If your paper application has been transferred to TTB’s PONL system, you can request a link to existing documents via PONL. Once the link is approved, you will obtain access to the permit application, which will allow you to file and submit and amendment through TTB’s online portal.

If your permit application was originally filed online via PONL, an amendment application should be filed online via PONL. TTB takes the position that, if your original permit was filed online, it is easier and more efficient for the agency to process your permit amendments online.

2. Types of Amendments

Amendments can be filed for all types of TTB alcohol beverage permittees: wholesalers, importers, DSPs, wineries, and breweries. The types of amendments and allowances, however, will ultimately depend on the type of permit your business has.

a. Change in Premise Location

A permittee can submit an amendment for a change in premise location with respect to the original permit. Note, however, that such changes in premise locations are restricted to the same state in which the TTB permit was issued. For example, if TTB issued an importer permit to a business whose premise address is in New York State, the permittee is generally allowed to submit an amendment to TTB for a change in premise location within New York State. However, a change in premise location to (for example) Connecticut would require the permittee to file a new federal permit application (also known as an “original application”).

A similar amendment to the change in premise amendment is a change in premise address due to a change in address by the United States Postal Service (USPS). This amendment would be appropriate if the company has not physically moved but, instead, the proper address changed on behalf of the USPS.

b. Change in Mailing Address

A change in mailing address is another type of permit amendment that can be filed with TTB. However, unlike the change in premise location, the change in mailing address can overcome state borders. It is possible that the original mailing address may be in a completely separate state than the premise location.

c. Add/Remove Signing Authority or Power of Attorney

One of the documents required when completing any permit application is the Signing Authority document or TTB Form 5100.1. The Signing Authority Amendment allows you to: (1) authorize new individuals to sign for your company; and/or (2) remove individuals previously authorized under TTB Form 5100.1. Note that if authorizing new individuals, a new TTB Form 5100.1 or other applicable documentation showing authorization may need to be filed with this amendment.

Another amendment option is adding or removing Power of Attorney. The Power of Attorney document (TTB Form 5000.8) authorizes individuals outside of your organization to sign or act on your company’s behalf. An amendment must be filed to remove an individual previously authorized as Power of Attorney, and an amendment must be filed to add a new Power of Attorney.

d. Change in Operations

Are you or have you changed your permitted business’ operations? If yes, then this must be recorded with TTB by way of an amendment. This is the type of amendment that can vary depending on the type of permit your company maintains with TTB. For example, wholesalers and importers can easily file a change in operations amendment with TTB to declare that they will begin distributing or importing (respectively) a new commodity. There is also an opportunity for an importer permittee to change operations and branch into acting as a wholesaler, and vice versa. The trickier changes in operations apply to the DSP, winery, and brewery permittees, who may even require a new or additional permit if they change operations. Specific changes to a business’ operations should be reviewed by counsel or, at minimum, consulted through with TTB.

e. Change in Business Name

File an amendment with TTB if there has been a change in the business name. Generally, you need to include supporting documents (such as amended Articles of Organization or similar) that show the name change. Note that this amendment does not apply to changes in business entities, such as if the business changes from an LLC to a corporation.

f. Add or Remove Trade Name

If adding or removing a trade name—such as the operating name or bottling on account for name—select this amendment. This change may require proof of registration with your state for use of the trade name. If you are “bottling on account for,” you may be required to submit a letter that provides your company with the permission to bottle on account of the trade name.

g. Change in Control

If your business exhibits a change in actual or legal control (e.g., changes in stock ownership, LLC membership ownership, major changes to corporate officers or directors, etc.), then a change in control amendment should be filed with TTB. This type of amendment covers situations where the legal entity that operates your business will still control and operate the business (i.e., the legal entity itself still exists). (Contrast this to a situation where, for example, a corporation is dissolved and the legal entity no longer exists.)

h. Change in Officer/Director/Member or Stockholder/Interest

Select this amendment if there is a change in the officers, directors, members and managers, as well as any stockholders or interest holders who hold 10 percent or more of the company. This type of amendment generally focuses on a change of an individual person.

i. Add or Remove Non-Contiguous Premise

File a non-contiguous premise amendment with TTB if your operations will extend to a separate location where operations can still be reported under the same permit. For example, if you have a DSP permit and you plan to extend the operation to another location, you may be able to file the non-contiguous premise amendment and continue operations at the separate location under the same DSP permit. This would avoid the need to file for a completely new and distinct DSP permit for the separate location. Note that there are limitations on this amendment with respect to how far the non-contiguous premise may be with respect to your main premise. Additional steps, such as changes to the bond or submission of diagrams of the new premise, may also need to be taken. Of course, state law applies in this instance as well and should be consulted.

j. Change in Bond (i.e., Superseding or Strengthening)

Changing your bond will require an amended application to TTB. Changes may include an increase in the penal sum of the bond, a change of the address of the bonded premise, or a change of the surety company. Note that this amendment may not apply to some TTB-regulated operations (i.e., wholesalers) who are not required by the federal government to have a bond.

k. Add or Remove Alternating Premises or Alternation of Proprietor

An alternating premises amendment may be an option for some TTB-regulated entities such as breweries, distilleries, or wineries. This amendment should be filed if the permittee is adding or removing a contiguous distilled spirits plant, brewery, or winery. Certain information, such as a revised diagram, variance request, and change in bond or consent or surety, may need to be submitted with this amendment. Always check state law with respect to alternating premises requirements and allowances.

Another type of amendment that is available for certain permittees is the alternation of proprietor. The alternation of proprietor amendment allows an existing permittee to have another distillery, winery, or brewery plant of different ownership share the premises and/or equipment. Again, certain information, such as a revised diagram, variance request, or a change in bond or consent of surety, may need to be filed with TTB. Note that the business that will be sharing the space or using your facility’s equipment generally needs to obtain its own, distinct license with TTB. State law should also be consulted to ensure all requirements are properly fulfilled.

l. Termination of Business

Of course, this last amendment is required if the business will no longer be in operation. It alerts TTB that your company will be discontinuing its operation with respect to permitted alcohol beverage operations.

3. Conclusion

The most important thing about filing an amendment with TTB is to set out with a plan. Know and understand the types of amendments that are available to you as an industry member, many of which may depend on the type of permit your company holds with TTB. Also vital is confirmation of whether or not the original permit was filed via paper or online, which will influence how an amendment can be filed as well as the processing time of your amendment application. Paper generally takes longer than online amendment applications, however it may vary depending on the specialist to whom the application is assigned along with the completeness of corresponding documentation. Further, it is important to keep in mind that some types of amendments may be processed significantly faster than others. For example, a change in the business name may be a faster review than adding a non-contiguous premise. Again, much of the success of an application strongly depends on the operation itself, the proposed amendment, and supporting documentation.

For more information on wine or alcohol law, or TTB permits, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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On September 15, 2016 at 2:00 PM EST, I will be presenting a CLE on beer, wine, and distilled spirits law with my colleague John Messinger. The CLE, titled “Beer, Wine & Distilled Spirits Law: Federal Regulation 101″ will have a live broadcast and will also be available on demand. A summary is below:

Beer Wine Distilled Spirits Law Federal Regulation 101When a consumer pops open a bottle of wine or sips his favorite scotch, rarely does one consider the level of regulation the beverage has passed through in order to find its way to market and on the dinner table. Alcohol beverages, however, are subject to a web of federal, state, and even local regulations that are often arcane, unclear, and reflective of Prohibition-era attitudes. This seminar will start with a discussion of the history of alcohol beverage regulation, along with an overview of the federal agency that has primary jurisdiction to regulate alcohol beverages. Then we’ll examine the types of licenses required for industry members and classification of products, along with formulation requirements for beer, wine, and spirits. Finally, we will discuss labeling, advertising, and recent updates to federal laws, class action lawsuits, and direct shipping to consumers.

Key topics to be discussed:

  • Introduction (History of beer, wine, and spirits regulation in the U.S.)
  • Licensing (Federal Permits)
  • Classification of Products
  • Labeling
  • Advertising
  • Hot Topics in Beer, Wine and Distilled Spirits Law

This is an updated presentation similar to the presentation John and I gave last year for myLawCLE. It will contain several new categories and updates in each topic.

To sign up or learn more, please see myLawCLE: Beer, Wine & Distilled Spirits Law: Federal Regulation 101.

For more information on wine or alcohol law, AVAs, or TTB matters, please contact Lindsey Zahn.

Image property of myLawCLE.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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Is Home Brewing Co. Merely Descriptive of Beer?

Home Brewing Co TTAB USPTO Trademark Merely Descriptive Beer LawRecently, an application before the United States Patent and Trademark Office sought to register the mark Home Brewing Co. in standard characters on the Principal Register for “Beer; Beer, ale and lager; Beer, ale and porter; Beer, ale, lager, stout and porter; Beer, ale, lager, stout, porter, shandy; Beers; Black beer; Brewed malt-based alcoholic beverage in the nature of a beer; Coffee-flavored beer; Flavored beers; Malt beer; Pale beer; Porter” in International Class 32. See In re The Homebrewer, LLC, Serial No. 86273728 (July 19, 2016) [not precedential]. Even though the application disclaimed the words “Brewing Co.,” the Trademark Examining Attorney initially refused registration. The Attorney refused registration of the mark on the grounds that the mark is merely descriptive of the identified goods. See 15 U.S.C. § 1052(e)(1). When the refusal was finalized, Applicant appealed and requested reconsideration (the latter of which was denied, thus resuming the appeal before the Trademark Trial and Appeal Board or TTAB).

As mentioned in prior blog entries, the Trademark Act precludes the registration of a mark if  it is merely descriptive of the mark’s goods or services when used in connection with the goods or services. 15 U.S.C. § 1052(e)(1). The determination of whether or not a good or service is merely descriptive is made in relation to the goods or services for which the registration is sought and not from an abstract point of view. “This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace.” See In re The Homebrewer, LLC, Page 3.

In this particular instance, the Board analyzed whether the entire mark, “Home Brewing Co.” was descriptive of the goods identified by the Applicant. Applicant argued that the dictionary definition of the word “home” means a place of residence, apartment, a permanent place of living, etc. and went on to reason that the goods would not be sold “at home” but instead at a business location. Further, Applicant argued that the use of the word “Home” in Applicant’s mark did not describe the quality or characteristic of the goods but instead was a marketing tool that effectively conveyed a sense of community, familiarity, and homeliness. Applicant also creatively argued that, while “homebrewing” and “homebrew” are well recognized terms in the industry, “the relevant consumer group encountering Applicant’s mark will immediately know that Applicant’s products are not ‘homebrewed’ because it is illegal to sell beer produced from one’s home.” Id. at 4. 

Upon review, the Board highlighted excerpts from Wikipedia on “homebrewing” and “beer” that were originally introduced by the Examining Attorney, finding that the evidence from the Examining Attorney alone supported the determination that Applicant’s mark “immediately informs prospective purchasers as to a quality, feature, or characteristic of the identified goods, namely that the target market for Applicant’s identified goods are ‘home brewing’ enthusiasts seeking to replicate at home the various the types of beers offered by Applicant, who are seeking a specific taste for their beer.” Id. at 5. The Board went on to say that a term is merely descriptive if it “alludes to” the group that the Applicant is directing its goods (even if the term is used as an adjective and not a noun) and such is not mitigated by the inclusion of “Co.” Id. at 5–6. 

The Board went on to examine additional evidence on the record from the Examining Attorney in regard to the Applicant’s website. Applicant had objected to the inclusion of this information, arguing that the company had since changed its business model. Despite such, the Board reasoned that it need not rely on such evidence to find that the mark is merely descriptive of the identified goods in the Applicant’s trademark registration application. 

For the above reasons, the Board found “Home Brewing Co.” to be merely descriptive of “Beer; Beer, ale and lager; Beer, ale and porter; Beer, ale, lager, stout and porter; Beer, ale, lager, stout, porter, shandy; Beers; Black beer; Brewed malt-based alcoholic beverage in the nature of a beer; Coffee-flavored beer; Flavored beers; Malt beer; Pale beer; Porter” in International Class 32 and affirmed the Examining Attorney’s Refusal to register the mark.

For more information on wine or alcohol law, or trademarks, please contact Lindsey Zahn.

Image property of Home Brewing Co.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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Lessons from Marketing a Wine and Beverage Law Practice

I was recently interviewed by Bentley Tolk for his podcast Legal Marketing Launch, which helps attorneys focus on marketing their legal practice. In the episode, I talk a lot about my blog and the development of the blog over the last several years, as well as practicing in a niche area like food and beverage law. For those interested, the episode can be accessed at the middle of Bentley’s blog here in the horizontal blue bar (you can press the triangle/play button).

Legal Marketing Launch generally airs three times a week for thirty minutes and each episode interviews a lawyer about his or her experience marketing their practice and obtaining new work. In summary:

Legal Marketing Launch generally consists of interviews with rainmakers in law firms, legal marketing professionals, time management experts, personal development experts, clients of legal services, motivational experts, social media experts, Internet marketing professionals, or general marketing professionals.

Legal Marketing Launch is an audio podcast that lasts for about 30 minutes and airs multiple times per week. Listening multiple times per week will provide you with strategies, tools, motivation and inspiration. Listen (responsibly) during your commute to work, or while exercising, working out, taking a power walk, walking the dog, getting ready in the morning, getting ready for bed, eating breakfast or lunch – even while brushing your teeth.

Like other podcasts, you can subscribe to Legal Marketing Launch in iTunes and listen to it on your commute or while doing other activities. It is an excellent podcast with a wonderful host and offers some solid, cutting-edge advice for new and experienced lawyers. 

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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