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South Dakota Opens Doors to Direct Shipping of Wine

Last week, the South Dakota Governor Dennis Daugaard signed a bill (HB 1001) into law allowing the direct shipment of wine and making South Dakota the 43rd state to allow direct-to-consumer shipping of wine. See South Dakota Governor Signs Direct-to-Consumer Wine Shipping Bill into Law. According to The Financial, the law’s provisions go into effect on January 1, 2016, which means wineries have almost one year before they can legally ship to consumers in the state.

Like most states, a winery will be required to obtain a separate license through the state of South Dakota in order to directly ship wine. At minimum, the winery will need to be licensed on the federal level with the TTB (i.e., have a federal basic permit), and pay an annual fee of $100 to obtain a direct shipping license. Id. With this license, a winery may directly ship up to 12 cases of wine per year—produced under the winery’s federal basic permit—to any adult consumer aged 21 years or older within the State during a calendar year. The winery must still perform due diligence, such as verifying the age of the consumer placing the order by obtaining a copy of the consumer’s government-issued photo ID or through an online age verification service.

In addition to the license, a winery seeking to ship directly into the state of South Dakota will have to comply with additional requirements of the state, such as registering labels, as well as pay excise and sales taxes and file quarterly reports. (Not an exhaustive list; for more information, please contact your legal counsel.)

For more information on the bill’s progression, see 2015 Session — Bill History: HB 1001

For more information on direct shipping, licensing, or TTB matters, 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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Wine Law Program University of Reims On Reserve Author to Teach at University of Reims Wine & Law ProgramIt is with great honor that I share the following: This summer, I will be teaching a course on U.S. Wine Law at the Wine & Law Program at the University of Reims. 

Four years ago, I had to absolute pleasure of attending the Program and exploring my burgeoning interest in this very intersection of wine and law. At the time, I was still a student in law school, but my passion and natural curiosity for wine law was eminent. I attended the program as an attempt to learn more not only about the topic, but to also probe at my own wonder. The Program was by far one of the highlights of my law school career because it helped animate topics and issues I had only read about in books or researched on Westlaw. Today, I am fortunate to practice wine, beer, spirits, and food law in my every day practice as a lawyer—and the Wine & Law Program certainly played an integral role in my decision to pursue this rather niche area of law.

This year, the Program is in its fifth session and will discuss topics related to wine law and wine marketing. The course will focus on questions like alcohol advertisement, health limits on the promotion of wine, ethics in wine marketing (prohibited wine names and trademarks) in the context of EU, U.S., and Australian law. The faculty includes Steven Charters, Vicki Waye, and Theodore Georgopoulos. Participants are mostly professionals but law (or wine-related discipline) students are also welcome.

Mr. Georgopoulos runs the Wine & Law Program at the University of Reims in the Champagne region of France. The Program includes the summer school session, hosted each year in English, as well as a one-year, full-time program, taught in French (DU vitivinicole et des spiritueux).

You can read more about my time at the 2011 Wine & Law Program in the article Life After Champagne: Synopsis of the 2011 Wine & Law Summer Program.

Photograph property of Lindsey A. Zahn.

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This week, TTB issued a new guidance on the annual filing requirements for wineries. The guidance announced that, for wineries meeting certain requirements, excise tax returns and reporting requirements may be filed annually. Specifically, this refers to the Excise Tax Return (TTB Form 5000.24) and the Report on Wine Premises Operations (TTB Form 5120.7). The guidance provides, in more detail, how a winery can be eligible to file each return or report on an annual basis.

What types of wineries are eligible to file Excise Tax Return annually?

Some wineries are eligible to file the Excise Tax Return annually, as opposed to semi-monthly or quarterly (as required by 27 CFR 24.271), provided they meet the following requirements (from 27 CFR 24.273):

  • The winery’s proprietor has not given a bond for deferred payment of wine excise taxes and the proprietor:
    • Paid excise taxes in an amount less than $1,000 during the prior calendar year; OR
    • Is a proprietor of a newly established bonded winery and reasonably expects to pay less than $1,000 in wine excise taxes before the end of the calendar year.

More information on deferred payment of wine excise taxes can be found in TTB’s guidance here. Winery proprietors who meet the above eligibility requirements may file the Excise Tax Return (TTB Form 5000.24) and remittance within 30 days after the end of the calendar year.

What types of wineries are eligible to file Report on Wine Premises Operations annually?

Generally speaking, proprietors of wineries are required to file the Report of Wine Premises Operation either monthly, quarterly or annually. 27 CFR 24.300(g). To be eligible to file the Report annually, a proprietor must:

  • File the Excise Tax Return (TTB Form 5000.24) annually, as outlined above; AND
  • Not expect the total of all bulk and bottled wine to exceed 20,000 gallons for any one month during the calendar year.

As TTB summarized in its guidance, if a proprietor is not eligible to file the Excise Tax Return (TTB Form 5000.25) annually, then they are preempted from eligibility to file the Report on Wine Premises Operations (TTB Form 5120.7) annually. If a winery proprietor is eligible to file the Report annually, the Report is due on January 15th of every year following the year for which the Report summarizes.

For more information on wine or wine law, licensing, or winery reporting and excise taxes, 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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In June of last year, the Supreme Court decided a rather revolutionary case for the food industry: Pom Wonderful LLC v. The Coca-Cola Company. The case, which was commenced by Pom Wonderful, questioned the label of a competitor’s product, Coca-Cola’s Minute Maid Blueberry Pomegranate juice. The Minute Maid label contained the words “blueberry pomegranate” in greater predominance than other text on the label that indicated the juice was a blend of five fruit juices. In actuality, the Minute Maid Pomegranate Blueberry juice contained 0.3% pomegranate juice and 0.2% blueberry juice, whereas 99.4% of the blend contained apple and grape juice (the remaining 0.1% was raspberry juice). See Pom Wonderful LLC v. The Coca-Cola Company, 573 U.S. ___ (2014), 134 S. Ct. 2228. While this label may seem misleading on its face, Coca-Cola argued its labeling was actually in compliance with FDA rules and regulations. Id. Pom Wonderful, on the other hand, alleged that the use of the label by Coca-Cola was misleading and deceptive under § 43 of the Lanham Act, which allows a competitor to sue another provided it asserts unfair competition from false or misleading product descriptions.

Because the Federal Food Drug and Cosmetic Act (“FD&C Act”), which authorizes the FDA to oversee food safety, does not provide an express or implied private right of action to enforce the Act’s provisions, Pom Wonderful brought a claim under the Lanham Act. The Lanham Act, which prohibits a number of activities, does allow a competitor to bring a private right of action against its competitor for unfair competition arising from false or misleading advertising. 15 U.S.C. § 1051 et seq. Because advertising and labeling are generally not mutually exclusive, the regulation of certain products can present interesting questions, especially in the context of the food and beverages. For example, how do the Lanham Act and FD&C Act interact when a label is in compliance with the FD&C Act and enacting agency regulations, yet may present grounds for unfair competition claims? Such was an issue presented to the Supreme Court last year. In an 8-0 decision, the Supreme Court ruled that competitors may bring Lanham Act claims challenging food and beverage labels regulated by the FD&C Act. 

What does this mean for alcohol beverages?

With respect to labeling (and generally speaking), the Alcohol and Tobacco Tax and Trade Bureau (“TTB”) has primary jurisdiction over alcohol beverages. The TTB’s enacting statute is the Federal Alcohol Administration Act (“FAA”). Neither the FAA nor the TTB were mentioned by the Supreme Court in Pom Wonderful, so many ponder how the Supreme Court’s ruling may apply to alcohol beverages. Presumably, the Supreme Court would have to analyze the issue with respect to the FAA. Others suggest that, because Pom Wonderful contains dicta regarding how the FDA treats food differently from drugs (whose labels generally require pre-approval from the FDA), this may mean the Court’s holding would not apply to pre-approved drug labels and the holding may extend to other pre-approved labels like alcohol beverages. See, e.g.POM Wonderful LLC. v. Coca-Cola Co. Sound Preclusion Jurisprudence or Pandora’s Juice Box? However, until this issue is actually examined by the Court—directly or indirectly—it is likely we will see some interesting lower court jurisprudence involving similar issues and implications. For example, as beverage attorney Robert Lehrman explained in one of his prior blog posts, “This case could have enormous implications far beyond FDA labels, and could extend all the way over to TTB labels, TTB formulas, excise taxes, TTB permits, to almost every area that alcohol beverage regulators have firmly controlled in the past.” See Pom v. Coke, Battle of the Misleading Fruits

Another interesting consideration is that, upon submitting a label application to TTB, an applicant must certify that the representations on the label truly and accurately represent the contents of the beverage product. Specifically:

Under the penalties of perjury, I declare; that all statements appearing on this application are true and correct to the best of my knowledge and belief; and, that the representations on the labels attached to this form, including supplemental documents, truly and correctly represent the content of the containers to which these labels will be applied. I also certify that I have read, understood and complied with the conditions and instructions which are attached to an original TTB F 5100.31, Certificate/Exemption of Label/Bottle Approval.

[Emphasis added.]  A bolder question may be whether the TTB perjury statement is strong enough to combat a Lanham Act claim, and how an agency’s pre-approval of a label may impact such claims. This is also yet to be seen.

In recent news, we’ve actually seen a lot of similar claims arise against alcohol beverage companies. While not exactly the same types of suits (i.e., not filed on behalf of competitors), the subsequent lawsuits have presented similar concerns about the labeling of alcohol beverages. For example:

  • A group of consumers sued Anheuser-Busch for “deliberately” overstating the alcohol content of its beers. See Anheuser-Busch Accused of Watering Down Several Brands. In December, Law360 reported that the plaintiffs bringing the lawsuit urged the Sixth Circuit to revive the suit and contended that the Pom Wonderful decision invalidated Anheuser-Busch’s defenses (which mostly relied on the Federal Alcohol Administration Act’s tolerance of 0.3% of the stated ABV on the label). See Anheuser-Busch Suit Buoyed By Pom Ruling, 6th Circ. Told.
  • In December, two consumers accused Maker’s Mark of false advertising and overcharging customers with respect to the brand promoting its bourbon as handmade on the product’s label when, as alleged by plaintiffs, the product is mass produced through a mechanized process. See Maker’s Mark ‘Handmade’ Claims Are False, Class Says. Case # 3:14-cv-2885-JAH-NLS.
  • Similar claims were brought against Tito’s Handmade Vodka with respect to the term “handmade” and against Templeton Rye with respect to the claims “Small Batch” and “Made in Iowa.” (For Templeton, the plaintiffs claim the product is not actually produced in Iowa but is instead distilled and aged in an Indiana-based factory that distilled and ages whiskey for countless other brands.) See Lawsuit: Tito’s Vodka Isn’t Actually ‘Handmade’see also Al Capone Liked It, But …
  • Finally, just last week, it was reported that a class action lawsuit was brought against Angel’s Envy Rye in Cook County, Ill, Circuit Court with respect to “small batch.” Lawsuit: Angel’s Envy Rye is No Small Batch Whiskey.

A quick search of the TTB label database using LabelVision indicates there are well over 700 labels approved since 1998 that have some reference to “handmade”; over 6,000 labels that have a reference to “handcrafted”; and near 1,000 labels that use the term “small batch.” A curious consideration about these terms is that neither “handmade,” handcrafted,” nor “small batch” are actually defined by the TTB or its regulations. Contrast this to fruit juice labels, which have specific rules and regulations on how a juice product can be labeled depending on its contents. The absence of a formal definition could, potentially, weigh in favor of a false advertising claim—especially if one considers how the Court in Pom Wonderful asserted that the Lanham Act and the FD&C Act were designed to be read together, and not one substituting the other. Still, it remains to be seen how the Court would rule with respect to TTB-regulated products.

While the above matters are still pending, it will certainly be interesting to see how different courts interpret and apply the Pom Wonderful ruling in the context of alcohol beverages as well as with respect to class actions. Further, it may be of even greater interest to beverage producers to see how many other similar suits appear in the near future. 

For more information on wine or alcohol law, labeling, or food law, 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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Hillside Select: Napa Vintner Sues Angwin Winery Over Name

Napa Valley vintner Shafer Vineyards recently filed suit against Angwin, California winery owner, Mike Beatty (doing business as Howell Mountains Vineyards) for use of the term Hillside Select on its wine. Shafer Vineyards—who according to the USPTO database registered the mark Hillside Select in January 1990—alleges Mr. Beatty used the Napa Valley vintner’s registered mark Hillside Select on wines produced by the Angwin winery. The complaint was filed in Napa County Superior Court in December and alleges federal and state trademark competition and likelihood to cause confusion, as well as unfair competition.

Shafer Vineyards’ signature wine is a cabernet sauvignon (dubbed Hillside Select) and its 2010 vintage sells for about $250. See Shafer Vineyards 2010 Hillside Select® Cabernet Sauvignon. According to the complaint, defendant was selling a red wine called Hillside Select; plaintiff demands that defendant stop using the name Hillside Select on its wines, as well as pay triple damages suffered by Shafer in addition to attorney fees, interest, and other costs. See Shafer Vineyards Sues Angwin Vintner Over Wine Name.

After searching ShipCompliant’s LabelVision, I found at least two other label approvals with the term “Hillside Select” within the class of wine. While one of those approvals does not currently seem to be used in commerce (if ever), the remaining approval seems to have been used on a previous cabernet sauvignon vintage several years ago. (It is not clear if this latter approval is still being used by the particular COLA owner.)

In this case Howell Mountains Vineyards was not attempting to register “Hillside Select” as a word mark, however the above still illustrates the importance of running a trademark clearance search before attempting to register a mark on the USPTO or state databases. If Howell Mountains Vineyards were seeking to register the mark “Hillside Select,” a trademark clearance search on the federal level would have returned results indicating that such mark was already registered to Shafer Vineyards on the USPTO database. The term “Hillside Select” seems to have been used by Howell Mountains Vineyards more as a fanciful name for the wine, and not necessarily as a brand or vineyard name, however the laws governing trademark still hold strong here. Perhaps it is worth noting that, in the case of wines, a proprietor should consider registering or conducting a clearance search for fanciful names.

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

Note: On Wednesday, January 21st, Decanter reported that Shafer “reached an amicable settlement” with Howell Mountains Vineyard with respect to “Hillside Select.” See more here

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 January 5, 2015, plaintiff Vignerons de la Méditerranée (“VM”) filed a complaint in the Supreme Court of the State of New York County of Westchester against Harrison-based importer Pasternak Wine Imports (defendant). The complaint names Domaines Barons de Rothschild (“DBR”) as a co-defendant to the complaint. Pasternak was the U.S. importer of the French wine company and in its complaint, VM claims breach of contract with damages of over $600,000. The complaint also alleges several other causes of action including implied covenant of good faith and fair dealing, unjust enrichment, tortious interference, and unfair competition.

VM argues that Pasternak conspired to limit the sales of its Pays d’Oc wines in the U.S. A wine boasting Pays d’Oc IGP is one that is produced completely within the Languedoc-Roussillon region of France and has been approved by the Pays d’Oc Wine Producers Union and meets strict quality criteria. According to the complaint, Pasternak agreed by contract not to market, represent, or sell any French Vin Pays d’Oc in the U.S. that was not supplied by the plaintiff, unless defendant obtained written consent from VM. At some point in time during this relationship—the exact date of which is not made clear by the complaint—the winemaker alleges that Pasternak created a subsidiary, Pasternak Wine Imports, LLC, and transferred all benefits, interests, liabilities, and obligations (including distribution rights) under the original Agreement between the parties to the new sub without the consent of VM. Further, interest was purchased by a competing French wine company, DBR (a direct competitor of the French winemaker). The defendant made the subsidiary the exclusive distributor of the plaintiff’s wines without the consent of the plaintiff (in or around March 2007). 

The complaint sets forth that VM sales in the U.S. decreased significantly and the importer failed to remit payment on invoices from the plaintiff. Further, as alleged by the plaintiff, the subsidiary marketed, represented, and sold competing wines from the Pays d’Oc region in the U.S. wines without the consent of the plaintiff. Alas, VM contends Pasternak and DBR conspired to limit the sales of VM’s Pays d’Oc wine while promoting the sale and distribution of DBR wines. In particular:

DBR conspired with [Pasternak Wine Imports, LLC] to preserve and expand its market for foreclosing access to VM products, business and distribution channels in the United States, Puerto Rico and the U.S. Virgin Islands, and by forcing, enticing and/or compelling [Pasternak Wine Imports, LLC] to market and advertise DBR’s competing wines rather than Plaintiff’s wines. As a result, [Pasternak Wine Imports, LLC] failed to comply with its contractual obligations to Plaintiff by failing to properly promote and market Plaintiff’s wines.

See  Vignerons de la Mediteranee vs. Pasternak and Domaines Barons de Rothschild (Index Number 50102/2015), Page 5.

The Commercial Division of New York Supreme Court, where the complaint was filed, handles complicated commercial cases, so should the case proceed, it is quite possible it may be removed (if diversity jurisdiction is found) and even sent to the court’s Alternative Dispute Resolution Program (“ADR”) if the court thinks the case is resolvable under the ADR process and wants it off of the court’s docket. Additionally, much of the outcome of this particular case may depend on how the contract between the two parties was originally drafted (a copy of the contract was not accessible via the public copy of the summons and complaint). 

See more information at Languedoc Wine Group sues US Importer.

To view a copy of the complaint, please see Vignerons de la Mediteranee vs. Pasternak and Domaines Barons de Rothschild (Index Number 50102/2015).

For more information on wine or alcohol law, direct shipping, licensing, or other legal matters 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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 Trademark: Can a Last Name be Confusingly Similar for a Wine?Joseph Barton, Applicant, sought to register the mark (in standard characters) BARTON FAMILY on the Principal Register in international class 33 “wine; wines.” See In re Thomas Barton, Serial No. 85826787 (Dec. 11, 2014) [not precedential]. The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting that there was a likelihood to cause confusion with the registered mark THOMAS BARTON for alcohol beverages, namely wine, in International Class 33 and with the registered mark BARTON & GUESTIER in typeset letters for wine in International Class 33. Id. at 1–2. (The two registered marks are owned by the same entity.) Applicant appealed and filed a request for reconsideration, which was denied by the Examining Attorney and thus the appeal resumed.

In its opinion, the Trademark Trial and Appeal Board (“the Board”) noted that the Applicant’s mark was more similar to the mark THOMAS BARTON than to BARTON & GUSTIER because the latter mark contained the term “GUSTIER,” which the Board found to be a more distinctive point of difference. Thus, the Board restricted its analysis to Applicant’s mark in relation to THOMAS BARTON (i.e., if the Board were to find that confusion existed between said marks, the Board recognized there was no need to examine whether the same existed between BARTON FAMILY and BARTON & GUSTIER).

The Board started with a discussion of the du Pont factors, noting that the first factor at issue was the relatedness of the goods, which it based on the the goods as identified in the application and cited in the trademark registration. Without much consideration, the Board easily found that the goods were identical (i.e., “wine”) and thus the second du Pont factor weighed heavily in favor of finding a likelihood of confusion. Because the goods were identical, there was a presumption that the channels of trade and classes of purchasers would be the same as well; Applicant admitted that the channels of trade were the same, thus the third du Pont factor weighed in favor of likelihood of confusion.

In comparing the marks, the Board considered the entireties of the marks as to appearance, sound, connotation and commercial impression, in order to determine the similarity or dissimilarity between the marks at issue. Similarity of any one of these factors can be sufficient to find the marks confusingly similar. Further, since the Board founds the goods to be the same, the grade of similarity required to find likelihood of confusion was lowered. The Board noted that, when comparing the marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Id. at 5 (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted)). Instead, the Board mentioned that the focus is on an average customer who will retain a general impression of the mark, as opposed to a specific impression.

In its discussion, the Board noted that because both marks contained the term “BARTON,” each mark was similar in appearance and pronunciation. The Board indicated that the name “BARTON” would be perceived as a surname and thus suggest that the same family produced the wine. Consumers familiar with THOMAS BARTON wine would likely assume that BARTON FAMILY was a new line of wine produced by the Barton Family. Further, the Board noted that “Barton” dominated Applicant’s mark BARTON FAMILY, leaving consumers with the impression that such wine is produced by a family business whose surname is BARTON. Similarly, “Barton” dominated the mark THOMAS BARTON whereas the term “Thomas” served more as a modifier, emphasizing the “Barton” portion of the mark. Thus, the Board reasoned, it was not unreasonable to give “Barton” more weight in the Applicant’s mark, the result of which provided a finding of confusion with respect to the first du Pont factor.

While Applicant provided six additional registrations containing the term, “Barton,” as an attempt to show that Registrant’s mark existed in a “crowded field and should be afforded a limited scope of protection,” the Board noted that such evidence was of limited probative value because such did not suggest the marks were used on a commercial scale or that the public had become familiar with the marks. Id. at 7–8. Further, only two of the registrations provided by Applicant were registered under Section 1(a) of the Trademark Act, both of which were owned by the same entity and did not include wine (i.e., applied to whisky and distilled spirits). (The remaining registrations provided by Applicants were based on Trademark Act § 66(a), which did not require a claim of use prior to registration of the mark, thus rendering the registrations of no probative value. Id. at 8.)

The Trademark Trial and Appeal Board affirmed the refusal to register on the grounds that BARTON FAMILY for “wine; wines” is likely to cause confusion with registered mark THOMAS BARTON for “alcoholic beverages, namely wine.” The reasons, as discussed above, encompass the identical nature of the goods, the presumption the foods will move in the same trade channels and be sold to the same classes of ordinary purchasers; and that the marks were similar in sight, sound, connotation, and overall commercial impression. Id. at 9. As mentioned previously, because the Board found a likelihood of confusion existed for the term BARTON FAMILY with respect to THOMAS BARON, the Board did not need to consider the Applicant’s mark in relation to BARTON & GUSTIER.

Can I trademark my surname?

For many winery and vineyard owners, the desire to use a surname or a family name as the business name or a brand name can be tempting. Often times, applicants believe they have an absolute right to register their last name or surname as a trademark with the USPTO. Generally speaking, in practice, this belief plays out as a myth but—like many instances in the law—there are exceptions that may allow for the registration of a surname on the Principal Register. The above case is a good example. Ordinarily, marks that are primarily merely surnames (such as “SMITH WINES”) cannot be registered on the Principal Register even if such names are already used as a business name or brand name and even if no one else is currently using the surname. Under the Lanham Act, a mark that is primarily merely a surname generally cannot be protected unless there is proof said mark has acquired distinctiveness (i.e., secondary meaning). In the past, “primarily merely a surname” has been understood to mean a mark whose primary impact or impression on the consumer is that of a surname and not of a trademark. The trademark law is partially designed to protect the interest of the consumer, specially from being deceived or confused by the use of a mark, and it is overwhelmingly understood that if all individuals retained a right to protect his or her own surname, some level of confusion or deception could inevitably evolve (particularly if said marks were obtained in the same class of goods). This attitude is seen in the above opinion discussing Applicant’s mark BARTON FAMILY WINES and the registered THOMAS BARTON within the same international classes (i.e., wine or namely wine). There are, of course, exceptions and multiple layers to trademark registration—and many aspects can depend on the mark itself (i.e., a unique or rare last name; whether the surname has any other recognized meanings aside from a surname; if the surname is used in combination with other words or other surnames; etc.). In the above case, it is unlikely that the mark THOMAS BARTON would be interpreted as “primarily merely a surname” because of the presence of the first name “THOMAS” in combination with the surname. However, if the mark contained only the surname “BARTON,” the result might be different. An interested party should contact his or her legal counsel for more insight.

Image property of Snooth.

For more information on wine or alcohol law, labeling, or trademark, 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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As many wine and direct shipping advocates are aware, the new year marks a step forward for Massachusetts: the legalization of direct to consumer shipping for U.S. wineries shipping to Massachusetts customers. In 2013 and 2014, former NFL quarterback Drew Bledsoe lobbied to pass a Massachusetts law in favor of direct to consumer shipping of wine because he could not ship wine from his Washington state winery to consumers in the Commonwealth. See, e.g.Massachusetts Legalizes Winery Direct Shipping, but Questions Remainsee also Wine Connoisseurs, Vineyards Eagerly Await New Direct Shipping Rules. And, while on its face, this new law sounds like a triumphant victory for a state that previously enacted legislation disfavoring the wine industry (e.g., Granholm v. Heald and Family Winemakers of California v. Jenkins), such news, unfortunately, has not come without additional concerns for industry members.

The new Massachusetts direct shipping law reportedly “accidentally delete[s]” a provision that previously allowed farm wineries to self distribute within the state. See As Deadline Looms, Farmer-Wineries Still Await Fix Promised by LegislatorsIn effect, this means that farm wineries cannot sell directly to retailers, a privilege that was previously allowed by Massachusetts law, and must instead make use of the state’s three tier distribution system and sell their wine to wholesale distributors before it can reach liquor stores and restaurants. For the thirty-four small wine and hard cider producers meeting Massachusetts’ “farm” definition, this change means each could opt to work with a wholesaler to distribute their wine to retail locations. Unfortunately, most of the Massachusetts farm wineries do not produce enough product to attract larger wholesalers and, even if they were to contract with distributors, doing so could cut a large portion of their profit margin. This is essentially why the Massachusetts law previously worked so well for lower volume producers: the freedom to bypass the wholesale distribution model and sell directly to Massachusetts retailers and avoid added costs or cuts in profit. It is reported that the removal of the farm winery’s ability to self distribute was not discussed nor mentioned when the new direct shipping to consumer law was drafted. According to Tom Wark at Fermentation, “The issue of self distribution was never debated in 2014 in Massachusetts. Whether wineries or cideries should be allowed to continued to sell direct to retailers was never at issue.” See Something Sneaky Happened On the Way to Direct Wine Shipping in Massachusetts. Mr. Wark reasons that “special interest” played a part in the removal of a provision Massachusetts farm wineries possess for many years.

In early December, Massachusetts legislators promised the wine community that the new law with the deleted provision would be corrected before it went into effect on January 1, 2015. As of December 31, 2014, however, The Boston Globe reported that winemakers were still awaiting confirmation that their self distribution privilege would be reenacted. Id. Accordingly, the Massachusetts House of Representatives adopted a revision to the new law that would include the age-old self distribution privilege for farm wineries. The revision was approved by the Senate and is awaiting signage by Governor Deval Patrick (as of December 31st). See Senate Backs Fix In Farmer-Winery Law.

Update January 5, 2015: After speaking with Kyle Schmitt at Homestead Hard Cider of Attleboro, Massachusetts this afternoon, it wast mentioned that the question of accountability for the deletion of a privilege farm wineries exhibited for 40 years still remains unanswered.

Update January 5, 2015: As reported by Massachusetts Live, the Massachusetts Governor did actually sign the fix into law. See Massachusetts Wine and Hard Cider Makers, Threatened by ABCC Advisory, Live to See Another Day. An “eleventh hour” new law was signed by the Governor on December 31, 2014 just in time for the new year, and carves out an exemption for state producers meeting the Massachusetts farm winery and cider definition, allowing such to self distribute to retailers. At the same time, the state will still allow direct to consumer shipping provided that the producer meets and follows the state’s laws.

To read a copy of the signed bill, see Massachusetts Farm Wineries Bill. For more information on Massachusetts’ Session Law on direct shipping, see An Act Authorizing the Direct Shipping of Wine.

For more information on wine or alcohol law, direct shipping, licensing, or other legal matters 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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Is CENTURY Confusingly Similar with SECOLO for Wine?

The Biltmore Company, Applicant, sought to register the mark CENTURY (in standard characters) for wine in International Class 33. See In re The Biltmore Company, Serial No. 85561663 (Nov. 21, 2014) [Not precedential]. Originally, the Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the grounds the Applicant’s use of its mark was likely to cause confusion with registered mark SECOLO for table wine in International Class 33. In its decision, the Board noted that the word, “Secolo” it Italian for “Century.” Upon refusal, Applicant appealed and filed a request for reconsideration; the Trademark Examining Attorney denied the request for reconsideration and the appeal resumed.

Upon examination, the Board started with the du Pont factors, particularly with relatedness of the goods, the evaluation of which the Board based on the cited application and registration. As one might expect, the Board easily found relatedness between “wine” and “table wine,” noting that “table wine” is a “type of wine” and were thus “encompassed by Applicant’s broader identification” (i.e., wine). Id. at 3. Noting there are no limitations of goods with respect to channels of trade or classes of customers, the Board presumed that both Applicant and Registrant offered “at least table wine for consumption to the same classes of consumers through identical distribution channels.” Id. The second and third du Pont factors thus heavily favored a likelihood of confusion.

After, the Board reviewed the first du Pont factor, i.e., whether the marks or similar or dissimilar with respect to sound, appearance, connotation, or commercial impression. Similarity of any one factor can be enough to find the marks confusingly similar. The test does not consist of a side-by-side comparison, but rather instead asks whether the marks are sufficiently similar enough with respect to commercial impression such that individuals who encounter the marks would likely believe there to be an association between the two marks or a connection between the parties. Id. at 5. The Board focuses on the recollection of the average purchaser, which is believed to be a general impression of the marks as opposed to more a specific impression. Id. For this particular analysis, the Board found reason in the doctrine of foreign equivalents, under which:

[F]oreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks.

Id. (citing Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005)).

The doctrine of foreign equivalents is applicable when there is a likelihood that an ordinary American purchaser—who, for the purpose of the doctrine, is assumed to be knowledgeable in the foreign language—would stop and translate the foreign term into English. the doctrine of foreign equivalents is a rule in trademark law that allows a foreign term to be translated into English to determine whether the term may be registered or if the term is likely to cause confusion with similar, registered marks. “Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording.” Id. at 5. In its opinion, the Board noted there was no dispute that there are a considerable amount of Italian speakers in the U.S., and it was also indisputable that SECOLO is an Italian term that translates to “Century” in English. “Generally, however, applying the doctrine of foreign equivalents is only part of the determination of whether the marks being compared are confusingly similar.” Id. at 6. In addition to similarity of connotation, other factors (such as dissimilarity in overall appearance and pronunciation of the marks, difference in the goods to which the marks are applied, and degree of suggestiveness of applicant’s mark and the cited mark to the respected goods) are considered. Id. at 7 (quoting In re Ithaca Industries, Inc., 230 USPQ 702, 703 (TTAB 1986)).

When analyzing other such factors, the Board found that: (1) The marks SECOLO and CENTURY as dissimilar in appearance but somewhat similar in pronunciation; (2) The terms SECOLO and CENTURY are arbitrary when applied to table wine, and thus SECOLO was conceptually strong as a trademark; and (3) Wine and table wine are overlapping goods sold to the same customers through identical trade channels, which also increased likelihood of confusion. Idat 8.

Interestingly, Applicants argued that because Registrant, when prosecuting its trademark application, admitted that purchasers would not stop and translate SECOLO into its English translation, the Board should thus find that purchasers would take the mark at face value and not apply the doctrine of foreign equivalentsId. However, the Board noted that Registrant took this position in response to a previous refusal to register with respect to prior registered mark CENTURY OF PORT for port wine. Id. The Board reasoned that Registrant’s prior position was not an admission, however may be considered in the totality of the circumstance. In this particular case, the Board took the position that Registrant’s prior opinion could not be treated as its opinion in this circumstance with respect to Applicant’s mark because the matter at hand involved a mark quite different from the prior, third-party registration. (I.e., “CENTURY OF PORT” versus “CENTURY,” the former which includes additional words; SECOLO means CENTURY and does not translate directly to CENTURY OF PORT.)

Further, applicant argued that wine drinkers are used to seeing foreign terms on wine labels, and would thus not translate SECOLO into “Century,” however the Board decided there was “no evidentiary support for this position.” Id. at 9. While some labels may contain foreign text, such does not dictate that a potential purchaser will not translate the term into English.

Accordingly, the Board thus affirmed the Trademark Examining Attorney’s refusal to register, on the grounds that CENTURY would be likely to cause confusion with the mark SECOLO.

For more information on wine or alcohol law, labeling, or trademark, 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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Earlier this year, On Reserve reported about the declaratory judgment suit launched against against Pernod Ricard’s Irish Distillers Limited, owner of the renowned Jameson Irish Whiskey, by Napa Valley-based vineyard Madison Vineyard Holdings, LLC, the owner of Jamieson RanchSee Jamieson Vineyards Takes On Pernod Ricard’s Irish Distillers. The complaint was filed in response to a cease and desist letter originally sent by Irish Distillers to Madison Vineyard Holdings, which asserted that the name “Jamieson” was confusingly similar to “Jameson” and was “likely to cause consumer confusion” or allow customers to think the mark “Jamieson” originated from, was endorsed by, or or authorized by Irish Distillers. The legal battle continued through the summer, including a counterclaim on behalf of the distiller. See The Trademark Battle of Jamieson Ranch Vineyards and Pernod’s Irish Distillers.

This last week, Wines & Vines reported that Jamieson Ranch Vineyards and the makers of Jameson Irish Whiskey settled and that Jamieson Ranch Vineyards would continue to use the mark “Jamieson” on its wines. See Jamieson Ranch Vineyards Keeps Disputed Name. According to Wines & Vines, the president of Jamieson Ranch Vineyards assured Irish Distillers that Jamieson Ranch Vineyards was in the market to produce wine—and not spirits. Id. “Jamieson Ranch” is the fourth name the property in Napa has had since 2009.

The remaining details of the settlement are unknown as of present, but one can only begin to imagine the settlement’s course and structure. This win for Jamieson Ranch Vineyards against a subsidiary of global entity Pernod Ricard is certainly an achievement. But, of course, there are many reasons why Irish Distillers may have opted to settle despite dispatching a cease and desist letter. For any company, a trademark infringement lawsuit can be timely, costly, and complicated, regardless of the size of the business. Still, it is possible that the assurance Jamieson Ranch Vineyards would not branch out into the spirits business may have been enough to meet the underlying goals of Irish Distillers.

For more information on wine or alcohol law, labeling, or trademark, 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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