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Recent Wine, Beer, and Spirits Decisions by the USPTO TTAB

The USPTO Trademark Trial and Appeals Board (TTAB) recently issued three relevant decisions to the wine, beer, and spirits industries. The decisions are summarized below.

  • In In re Harlequin Enterprises Limited, Serial No. 86761280 (September 7, 2017) [not precedential], Applicant (Harlequin Enterprises Limited, a purveyor of romance novels) sought to register a design mark (similar to a book spine) that contained the terms VINTAGES BY HARLEQUIN (with the term “VINTAGES” disclaimed) for wine in International Class 33. The Examining Attorney originally issued a refusal under 2(d) of the Trademark Act on the grounds that Applicant’s mark resembled prior registration for the mark HARLEQUIN for liqueur. Applicant appealed to the TTAB and argued that its fame in connection with romance novels made the potential confusion between Applicant’s wine and Registrant’s liqueur unlikely. The Board found that the evidence presented by Applicant was “impressive and undisputed” in regard to the fame of the mark HARLEQUIN with respect to romance novels. See id. at 3. While the Board accepted and did not dispute that Applicant’s fame for the mark HARLEQUIN for romance novels, the Board argued that fame did not make confusion unlikely. Further, the Board said that the marks and devices used in promoting Applicant’s wine (which were not reflected in the drawing page for the proposed registration) were irrelevant to the Board’s analysis. The Board then entered a lengthy discussion in regard to whether or not a likelihood of confusion existed for HARLEQUIN (liqueurs) and VINTAGES BY HARLEQUIN (wines) by reviewing the similarities and dissimilarities of the marks, the relation of wine and liqueur, the amount of third-party registrations that produce both wine and liqueur under the same trademark registration. In the end, the Board found that confusion was likely because the marks were so similar and moved in similar trade channels. The 2(d) refusal to register was thus affirmed.
  • In re Iron Hill Brewery, LLC, (September 8, 2017) Serial No. 86684857 [not precedential], Applicant (Iron Hill Brewery, LLC) sought to register the mark CRUSHER in standard characters for beer in International Class 32. The Trademark Examining Attorney originally refused registration for the mark under 2(d) on the grounds that Applicant’s mark resembled a mark for the registration THE CRUSHER on the Principal Register in standard characters for wines in International Class 33 and that registration would likely cause confusion, mistake, or deception. Applicant appealed and the Board quickly jumped into a likelihood of confusion analysis, detailing the similarities and dissimilarities of the marks and the similarity of the goods/channels of trade/consumers. Not surprisingly, the Board found that the marks were “nearly identical in sound, appearance, and commercial impression” thus weighing heavily in favor of finding a likelihood of confusion. In regard to the similarity of goods/channels of trade/consumers discussion, Applicant determined that a central issue was whether or not there is a “de facto” rule that wine and beer are the same for trademark registration purposes. Id. at 6. Both the Board and the Examining Attorney struck this down, but quoted In re Shell Oil Co. by reasoning that the use of an identical mark can lead to an assumption that there is a common source even when the goods are not competitive or intrinsically related. Id. In short, the Board found that there was a likelihood of confusion between Applicant’s and Registrants marks and thus affirmed the refusal of the Examining Attorney.
  • farm to table uspto ttab wine law trademarkIn In re Fowles Wine Pty Ltd., Serial (September 15, 2017) No. 79157017 [not precedential], Applicant (Fowles Wine Pty Ltd.) sought to register FARM TO TABLE in standard characters for wine in International Class 33. The Trademark Examining Attorney refused registration, reasoning that FARM TO TABLE was merely descriptive of a feature or characteristic of the identified goods and that FARM TO TABLE did not function as a trademark to indicate the source of the goods. Applicant appealed and the Board. Examining Attorney submitted a significant amount of evidence using the phrase “farm to table” in connection with wines. See id. at 2–7. Applicant provided evidence of third-party registrations before the USPTO with respect to other food products that used the phrase FARM TO TABLE or similar. See id. at 9–10. The Board argued that some of the registrations were only issued on the  Supplemental Registrar (not the Principal) and that some of the TSDR printouts did not include, e.g., information on whether or not a mark had acquired distinctiveness under Section 2(f) or if any of the wording had been disclaimed. However, the Board considered much of the table as evidence at face value since the Examining Attorney did not previously object. The Board turned to the more substantial question of whether or not the applied-for mark served as a source identifier with respect to Applicant’s goods. In doing so, it noted that the “central question in determining whether Applicant’s proposed mark functions as a trademark is the commercial impression it makes on the relevant public.” Id. at 12. Upon review of the evidence, the Board agreed with the Examining Attorney that the proposed mark failed to function as a trademark. The Board reasoned that the phrase is used as a statement or slogan by many third parties to indicate local origin of a food or wine and that consumers are accustomed to seeing this phrase used on or in connection with food or wine from many different sources, which cut against the purpose of a trademark (i.e., to identify a single commercial source). After a discussion of mere descriptiveness, the Board ultimately determined that FARM TO TABLE failed to function as a mark as defined by the Trademark Act and was merely descriptive of the wines identified in Applicant’s application. Id. at 21. Thus, the Board affirmed the Examining Attorney’s refusal to register the mark.

For more information on wine law, alcohol law, or trademark 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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In October, I had the great pleasure of visiting the Champagne region and teaching a course on U.S. Trademark Law at the University of Reims’ Wine & Law Program. The University of Reims’ Wine & Law Program is directed by Professor Theodore Georgopoulos and consists of a full-year program (Master’s Degree) along with a summer program. (This year, the program was actually held in the fall which, as I quickly discovered, is a most excellent time to visit the Champagne region.) The first summer school program was held during the summer of 2010 and, each year, the Program has a different session title or focus. The Program takes place in Reims, in the heart of the Champagne region of France, making it an ideal location for students looking to learn more about Champagne in addition to wine law. The Program is a always a good mix of academia and educational extracurricular activities.

reims wine law program france champagne veuve cliquot

This year, the Program focused on Trademarks and Geographical Indications in the wine and spirits indsutry and explored this topic in the context of EU, Australian, and U.S. law. Courses examined concepts like how international trade agreements play a role with GIs, wine marketing and promoting GIs and trademarks, the protection of geographical indications, and trademark law (from EU, U.S., and Australia perspectives). Faculty included Professor Theodore Georgopoulos, Professor Stephen Stern, Professor Steve Charters, Professor Stefan Martin, and myself.reims champagne wine law program france notre dame

The Program included visits to the Mont d’Hor Domain in Saint-Thierry, the production premises of Moët and Chandon in Montaigu, a lecture at the Comité Interprofessionnel du vin de Champagne, Krug Champagne House, and a visit to the caves of Veuve Clicquot in Reims. The program concluded with the graduation cocktail at the Veuve Clicquot property in Reims, which included a tour of the caves and The Annual Global Wine Law Lecture.

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Dr. Kevin Fandl, Assistant Professor and Academic Director of Global Immersion Programs at Temple University’s Fox School of Business, recently reached out to share an exciting opportunity in Santiago, Chile this January along with a call for contributes or co-authors.

Temple University’s CIBER is offering Faculty Development in International Business (FDIB): Study the Business of Wine in Santiago, Chile from January 5-11, 2018. He encourages interested faculty members to share the enclosed flyer with other faculty members at their respective universities and institutions. The team has also created a short video about this FDIB: FDIB Chile Video.

In addition, Dr. Fandl is currently developing a series of journal articles focused on the regulation of the wine industry across global sectors. His research focuses specifically on the relationship between wine regulation and innovation. If you have expertise in this or a related area and you would be interested either in sharing your expertise or going so far as co-authoring a piece with him (short practice-oriented piece or academic journal article), he would very much like to speak with you. Please feel free to reach out to him at Kevin.Fandl@Temple.edu.

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TTB Revises Guidance Document on Personalized Labels

On September 5, 2017, TTB issued a new public guidance document, TTB G 2017-2, for personalized labels which the agency said supersedes its prior guidance TTB G 2011-05 but does not “completely change the underlying policy.” See TTB Public Guidance, TTB G 2017-2, Personalized Labels. Per TTB, the new guidance seeks to clarify the process for applicants seeking label approval to make certain changes to personalized labels without having to submit a new label application to TTB.

TTB considers a personalized label one that contains the minimum mandatory label information as mandated by 27 CFR Parts 4, 5, and 7 and through which is customized for a particular individual. These types of labels generally contain a specific message, statement, picture, or similar that may celebrate, for example, a wedding, anniversary, birthday, etc. The labels are specific to the customer who is purchasing the product. TTB notes in its guidance document that TTB G 2017-2 does not apply to customized private labels, which are generally created for purchasers other than the ultimate consumer.

In general, if an industry member wishes to make changes to a TTB personalized label, such must be indicated on the label application submitted to TTB. In its guidance, TTB notes that “[t]he applicant must submit a template for the personalized label with the application for label approval, and must note on the application a description of the specific personalized information that may change.” The template should include all mandatory information that is required to appear on the label for the particular product (such as brand name, class or type designation, alcohol by volume statement, etc.) as well as any other label information that is not part of the customized/personalized label. (This may include, for example, descriptive text about the wine’s tasting notes.)

TTB also indicates in 2017-2 that Item 15 of the label application must include additional information, such as the specific personalized information and details on which or not the label will be etched. The guidance document further clarifies that this information must be put in Item 15 and not, for example, as an attachment or in “Note to Specialist.” This information seems to be clarified slightly with respect to TTB’s prior guidance document (TTB G 2011-05).

TTB G 2017-2 also clarifies information with respect to making changes to an approved, personalized label. The agency states that changes must be consistent with the personalized label qualification printed below:

The approval of this COLA covers this label and any additions, deletions or changes in graphics, salutations, congratulatory dates and names, and artwork to personalize the label as indicated on the application. This approval to change the personalizing information does not permit the addition of any information that discusses either the alcohol beverage or characteristics of the alcohol beverage or that is inconsistent with or in violation of the provisions of 27 CFR parts 4, 5, 7 or 16, as applicable, or any other applicable provision of law or regulations.

Changes to mandatory information, such as the brand name or class or type designation, is generally not allowed. TTB further emphasizes that holders of personalized label approvals cannot add “personalized statements, graphics, pictorial or emblematic representations that are not allowed on labels that undergo TTB review.” Industry members are also reminded that TTB’s label regulations—including prohibited label statements—still apply to personalized labels approved by TTB. Much of this remains consistent with TTB’s prior guidance document from 2011.

For more information on wine or alcohol 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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Federal Compliance Update at the 2018 Eastern Winery Expo

Join Marybeth Williams of Williams Compliance and me at the 2018 Eastern Winery Expo in Lancaster, Pennsylvania March 6th through 8th for an update on federal winery compliance. A description of our event is provided below.

“They want me to do WHAT!?!?” How to remain afloat in the winding river of alcohol law?Join industry legal experts for a spirited discussion on the ever-changing regulations that impact how wineries do business today. We will discuss some recent regulatory and policy changes, along with providing some clarification on hot topics like advertising and social media. This discussion is a must for both current winery operations as well as those individuals thinking about starting a winery or wine business.

The 2018 Eastern Winery Expo schedule is available here and includes two full days of events and one full day of workshops. Registration opens on November 2nd and includes an early bird price through December 14th.

For more information on wine or alcohol 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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TTB Opens Comment Period for Three Proposed Wine Rules

On Wednesday, October 11, 2017, TTB announced that it would reopen comment period for three relevant proposed rules for the wine industry. The proposed rules were originally published in the Federal Register in 2016. The following rules have their comment periods reopened:

  • Notice No. 160, Proposed Revisions to Wine Labeling and Recordkeeping Requirements. This proposed rule was originally published in the Federal Register on June 22, 2016. TTB proposes to amend its labeling and recordkeeping regulations in 27 CFR part 24 to provide that any standard grape wine containing 7 percent or more alcohol by volume covered by a certificate of exemption from label approval may be labeled with a varietal designation, a type designation of varietal significance, a vintage date, or an appellation of origin only if the wine is labeled in compliance with the standards set forth in the appropriate sections of 27 CFR part 4. The comment period has been reopened through January 9, 2018. You can submit a comment online here. The prior comments are viewable here.

  • Notice No. 164, Wine Treating Materials and Related Regulations. This proposed rule was originally published in the Federal Register on November 22, 2016. In summary, TTB is proposing to amend its regulations for wine production in 27 CFR part 24, particularly those regarding permissible materials and treatments that may be applied to wine and juice from which wine is made.  The comment period has been reopened through January 9, 2018. You can submit a comment online here. The prior comments are viewable here.

  • Notice No. 165, Proposed Addition of New Grape Variety Names for American Wines. This proposed rule was originally published in the Federal Register on November 17, 2016. In summary, TTB is proposing to amend its regulations for wine labeling in 27 CFR Part 24 by adding new allowable grape variety names.  The comment period has been reopened through January 9, 2018. You can submit a comment online here. The prior comments are viewable here.

For more information on wine or alcohol 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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2017 Wine & Law Program in Champagne, France this October

2017 wine law program reims

2017 wine law program trademark gis reims france

This year, the University of Reims’ Wine & Law Program is in its seventh session and will discuss topics related to trademarks and intellectual property rights in the wine and spirits sector. The Program is a 6-day intensive course program in English from October 9, 2017 through October 14, 2017 at the Université de Reims Champagne-Ardenne. Topics include international and comparative aspects of geographical indications, trademarks, and intellectual property rights. The faculty consists of  Steven Charters, Silvere Lefevre, Stefan Martin, Stephen Stern, Jean-Marie Barillere, myself, and Theodore Georgopoulos. Participants are mostly professionals but law (or wine-related discipline) students are also welcome.

Courses and Seminars include:

  • Trademarks & Geographical Indications in Wine Marketing
  • Introduction to the European Protection of Geographical Indications
  • Seminar on the Practice of the EUIPO
  • Seminar on European Case Law Related to IP Rights
  • The International System of Protection for GIs and Trademarks Applied to the Wine Sector
  • Trademarks & Geographical Indications for Wines & Spirits in U.S. Law
  • Trademarks & Geographical Indications for Wines & Spirits in Australia
  • Special Event: Discussing Wine & Spirits Law with FIVS

The program also includes visits to local Champagne landmarks and relevant legal institutions, wine tasting, sightseeing, and socializing.

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

To find out more about the Program or to apply, see the official Wine & Law Program website here.

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 and 2015 Wine & Law Program at the University of Reims in Champagne, France.

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Fetzer Vineyards (“Applicant”) recently sought registration in standard character mark for HOODWINKED on the Principal Register for wine in International Class 33. In re Fetzer Vineyards, Serial No. 86789970 (June 22, 2017) [not precedential].  Originally, the Trademark Examining Attorney refused registration of the mark under Section 2(d) of the Trademark Act based on a likelihood of confusion with the registered standard character mark HOODWINKED for beer in International Class 32. The Applicant appealed and requested reconsideration, the latter of which was denied by the Examining Attorney and thus the appeal resumed. We’ve seen similar cases in the past come before the Board such as, e.g., Duo for wine and Duo for malt beverages. See USPTO Finds a Likelihood of Confusion for Duo for Beer and Duo for Wine. Not surprisingly, the Board affirmed the Examining Attorney’s refusal to register HOODWINKED for wine (very similar to its prior findings with respect to DUO).

In any likelihood of confusion analysis, the Board looks to the similarities between the marks and the similarities between the goods. In reviewing the identity of the marks, the Board found the marks to be identical, which weighed heavily in finding a likelihood of confusion. Thus, the degree of similarity between the goods required to support the finding of a likelihood of confusion was reduced.

Next, the Board looked to the similarity of dissimilarity of the nature of the goods. As previously noted, it is not necessary that the goods be similar or competitive in character to support the finding of likelihood of confusion; it is sufficient that the goods are related in some manner and/or that “conditions and activities surrounding marketing of these goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same source.” In re Fetzer Vineyards, at 3.

To establish a relationship between Applicant’s wine and Registrant’s beer, the Examining Attorney included printouts from 17 different third-party websites with respect to advertising or offerings that included both beer and wine under the same mark or name, along with 11 third-party, use-based registrations for marks that cover both beer and wine. Applicant attempted to downgrade the Examining Attorney’s evidence by arguing that the evidence contained small, family operations “mostly” only available for on-site consumption through beer pubs and similar. Applicant instead provided evidence from the Corsearch database that was limited to registrations for the marks of the top ten beers sold in America (e.g., Samuel Adams, Guinness, Dos Equis, Stella Artois, Heineken, Corona, etc.). Applicant argued that its search disclosed that, out of all the registrations for top ten beers sold in the U.S., only one also contained a registration for wine (another contained a registration for a beer and wine festival, which applicant argued was not wine per se). See id. at 5–6.

Applicant also provided  a printout of a search of breweries from the State of Virginia Tourism website, which Applicant claimed contained only one business that operated as both a brewery and winery.

After reviewing the information, not surprisingly, the Board established there is a relationship between wine and beer. The Board reasoned that it did not necessarily agree with Examining Attorney’s assessment that the evidence provided showed that wine and beer are “closely related,” but instead found there were enough examples of beer and wine offered under the same trademark or trade name that established the goods were related. “Aside from it being common knowledge that they are alcoholic beverages and often consumed with meals, the evidence shows that they are sometimes marketed together in the same trade channels.” Id. at 6–7. The Board looked to the website of Schram Vineyards Winery & Brewery, which it said showed how one entity can cater to both wine and beer lovers by providing both beer and wine at one location. Id. at 7. Further, “[t]he third-party registrations further show that beer and wine may emanate from the same source under a single mark.” Id. 

In regard to Applicant’s evidence for the top ten beer producers, the Board said that even if it agreed that the top ten producers did not share trademarks with wine, this alone would not be sufficient by itself to conclude that beer and wine are unrelated generally. Id. Alas, the Board determined that Applicant’s evidence had little provocative value even if it established what Applicant claimed. Thus, the Board determined—in light of the above—there was a likelihood of confusion between Applicant’s mark and Registrant’s mark and thus refused the registration of Applicant’s mark under Section 2(d) of the Trademark Act.

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 July 25, 2017, Governor Cuomo signed legislation to allow New York farm distilleries to sell wine, beer, and cider labelled as “New York State” for on-premises consumption. See Governor Cuomo Signs Legislation to Allow Farm Distilleries to Sell New York State Labelled Beer, Wine, and Cider for On-Premises Consumption. Previously, New York-licensed farm distilleries were not allowed to offer such beverages to visitors on site; farm distilleries could only provide New York State-labelled spirits for on-premise s consumption. This contrasted significantly with other farm licensees (e.g., farm cideries, farm breweries, and farm wineries) who generally could offer New York State-labelled wines, beers, ciders, and spirits to visitors for on-premises consumption.

The new law will amends Section 61 of New York’s Alcoholic Beverage Control law to allow farm distilleries to sell New York State-labelled beer, wine and cider for on-premises consumption and is effective immediately. To follow the legislative history, see Senate Bill S2481 and Assembly Bill A2994.

For more information on wine or alcohol law, permits, or TTB regulations, 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 Chat and Cider Law

I was recently interviewed in a podcast by Ria Windcaller of Cider Chat. We had a one-hour discussion on cider law, obtaining permits with TTB, labeling, advertising, social media, and various other topics that impact the cider community. It was a great experience, and the chat is available to listen to on Ria’s website here. Drop us a line and let us know how we did: lazahn@winelawonreserve.com.

Other ways to let On Reserve fans listen:

For Android phones:
Stitcher App:  http://bit.ly/1OvdrDq
Google Play: http://bit.ly/24Io0bc
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