This blog article is the first in a series called “Wine Law Trademark Series” which aims to help industry members understand general trademark concepts.
Wineries often look to common law to protect their marks and intellectual property. This can be a feasible solution if the winery remains small and if its products remain in a limited market (i.e., intrastate). However, problems often arise once sales and product expand to new markets (i.e., outside of a winery’s home state) and enter interstate commerce where other wineries may have common law rights to the same or similar marks. For this reason—and many others—wineries should consider registering a mark with the United States Patent and Trademark Office (U.S.P.T.O.). Registering a mark with the federal trademark office can help avoid issues such as confusion and conflicts that may be caused by overlapping marketings. A federal registration grants rights to the mark holder throughout the United States and its territories.
When seeking to register a mark with the U.S.P.T.O., one must first determine if the mark is registrable. Registrability has is best thought about as a spectrum with two distinct ends. On the first end are marks that are inherently distinctive and protectable; on the opposite end are marks that are not inherently distinctive and either not protectable at the time of adoption (but may, e.g., acquire distinctiveness through use over time) or are not protectable at all. Ideally, a strong mark will fall on the first end of the spectrum.
What are the five types of marks and where do they fall on the spectrum of registrability?
There are several different types of marks and each are awarded different levels of protection and distinctiveness.
Fanciful Marks: The first type of mark is called a fanciful mark, which includes terms or symbols that have no meaning and are generally completely original (i.e., made-up or invented). Because the marks do not have a meaning, consumers will associate the mark with the mark owner’s product or service. These are generally the strongest types of marks as they are inherently distinctive and are the most distinctive type of mark. Fanciful marks can be registered with the U.S.P.T.O. barring any other issues.
Arbitrary Marks: Next on the spectrum are arbitrary marks, which are less inherently distinctive than fanciful marks. Arbitrary marks have a common or an understood meaning and are familiar to the consumer but are not associated with the good or service of the mark. They are often an unexpected use of a term with the good or service. These types of marks may make a strong impression on a consumer and are considered inherently distinctive and registrable (again, barring any other issues)
Suggestive Marks: Suggestive marks, while registrable, are near the middle ground of the spectrum that separates distinctive marks from non-distinctive marks. Much like their name, suggestive marks suggest the good or service to which the mark corresponds. A suggestive mark may describe a quality or characteristic of a good or service. Key here is that suggestive marks do not describe (i.e., they are not descriptive) the actual good or service, but merely suggest such and requires a consumer to make a leap in order to connect the exact nature of the goods. As may be evident, there are different degrees of suggestiveness depending on the mark as well as the good or service. In other words, some suggestive marks are more distinctive than others. Suggestive marks that are less distinctive are still protectable but they are generally more difficult to protect than, e.g., fanciful or arbitrary marks.
Descriptive Marks: Again, just like their name, descriptive marks describe a quality or characteristic of a good or service. These marks fall beyond the midpoint of the registrability spectrum on the “non-distinctive” mark side. While these marks are not protectable when they are first adopted by a party, but may be registrable if they acquire distinctiveness (secondary meaning in the minds of consumers) through use in association with the good or service. This does require time and much support, so proving that a descriptive mark has acquired secondary meaning or distinctiveness can be challenging.
Generic Marks: Last on the spectrum are generic marks. Generic marks are at the far end of distinctiveness and protection. Marks that are generic identify the product or service and are not protectable as trademarks even if they acquire secondary meaning.
Because trademark law has many layers and can significantly impact a winery’s branding, marketing, and image to a consumer, it is essential that industry members conduct due diligence before deciding on a mark (or a new mark) to which they may become attached. Your wine trademark lawyer can guide you in the best direction for determining whether or not a mark is distinctive and registrable with U.S.P.T.O.
For more information on wine or 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.