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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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Coming Soon to a Menu Near You: Alcohol Calorie Counts

Last week, the FDA published a final rule in the Federal Register that mandates calorie and nutrition information be listed on menus and menu boards to certain restaurants and retail food establishments. The requirements, which go into effect on December 1, 2015, extend to restaurants and retail food establishments that are part of a chain of 20 or more locations (where location means a fixed position or site) that do business under the same name and offer for sale substantially the same menu items. Such establishments are required to include calorie and nutrition information for standard menu items (which FDA defined to mean a restaurant-type food that is commonly included on a menu or menu board food or frequently offered as food on display and self-service food). Restaurants and retail establishments that do not otherwise fall under the requirements of this new rule may elect to become subject to these rules by registering with the FDA every other year. The final rule is the Agency’s attempt to combat the country’s obesity epidemic by confronting consumers with actual calorie counts on meals or food consumed outside of the house.

What has come as a surprise to many is that the new rule actually includes alcohol beverages, which were not included in the proposed rule. In other words, a food establishment falling within the new rule would be required to declare calorie count of an alcohol beverage on its menu (with some exceptions). For restaurateurs whose revenues may depend on or thrive off of alcohol sales, declaring alcohol calorie counts may come as a particularly unpleasant surprise.

While one comment asserted that

[E]stablishing menu labeling requirements for alcoholic beverages could lead to inconsistencies with TTB requirements. One comment pointed out that TTB has rulemaking underway for ‘‘serving facts’’ on alcoholic beverage labels and asserted that, if FDA establishes menu labeling requirements for alcoholic beverages, there could be inconsistencies between nutrition information on labels and menus

and while FDA countered that

[T]he nutrition labeling requirements finalized here do not apply to and have no effect on the labels of alcoholic beverage containers. In addition, the new requirements apply to covered establishments, not to alcoholic beverage manufacturers. In contrast, TTB’s ‘‘Serving Facts’’ rulemaking would establish new requirements for disclosures on alcoholic beverage labels and would apply to alcoholic beverage bottlers and importers

it is curious to consider how, in practice, the disclosure of an alcohol beverage’s calories or nutritional information may translate. 79 Fed. Reg. 71156  (Dec. 1, 2014). Currently, TTB does not require calorie nor nutritional disclosure on the labels of alcohol beverage products falling within its jurisdiction (with few exceptions, such as if the product makes a calorie or carbohydrate claim or statement). And whereas the FDA is not requiring a TTB-regulated manufacturer or importer change its labels, the FDA is asking retail establishments, such as restaurants, that sell such alcohol beverage products to provide information on the product’s calorie count and nutrition that is not currently available on most alcohol labels. The agency indicates, in its response to the comments for the final rule, that a covered establishment will have “significant flexibility in choosing a reasonable basis for their nutrient content disclosures, which can include a database such as the USDA’s National Nutrient Database for Standard Reference.” Id. Perhaps some of this is foreshadowing what is to develop on TTB’s end with respect to serving facts.

Foods that the final rules specifically excludes from the rule’s nutrition and calorie requirement include the following:

  • Foods that are not standard menu items, such as condiments, daily specials, and temporary menu items;
  • Food that is part of a customary market test;
  • Self-service food;
  • Food on display that is available for sale for less than 60 days per calendar year or fewer than 90 consecutive days (in order to test consumer acceptance); and
  • Alcohol beverages that are food no display and not self-service food (such as bottles behind the bar used to prepare mixed drinks).

For more information on wine or alcohol law, labeling, or FDA 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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On Reserve Author Quoted in The Wall Street Journal

 On Reserve Author Quoted in The Wall Street Journal

The Wall Street Journal recently published an article detailing the New York State Liquor Authority (“NYSLA”) and Empire Wine dispute on retailer direct shipment to consumers. The retailer originally filed suit against the NYSLA in September, shortly after the Authority issued a letter to Empire stating the retailer violated a state regulation that allows the NYSLA to revoke, cancel, or suspend a liquor license due to “improper conduct” of the licensee. In November, Empire’s case was dismissed by a New York State Supreme Court, and the retailer was instructed to exhaust its administrative remedies before commencing action in court. Empire is currently scheduled to appear before the Authority on January 23rd for a revocation hearing. 

To read the WSJ article, please visit Interstate Shipping Flap Rattles N.Y. Wine Retailers.

Photograph snippet property of The Wall Street Journal.

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Justice Doris Ling-Cohan, a Manhattan judge, reversed the New York State Liquor Authority’s (“NYSLA”) decision to revoke the license of a Long Island farm winery. The judge dismissed three charges brought on behalf of the NYSLA against Vineyard 48, a Southold, Long Island-based farm winery. Justice Ling-Cohan noted that the revocation, along with the three charges brought on behalf of the NYSLA, “shocked the court’s sense of justice.” See N.Y. Winery Defeats Bid to Have License Revoked.

The NYSLA argued that Vineyard 48 violated its farm winery license by “permitting a dance party type atmosphere.” Id. Neighbors of the winery alleged that the owner “turned the place into a rock concert venue, complete with violent, lewd and drunken behavior.” Id. At a board meeting to adopt the revocation recommendation of the administrative law judge, the chairman of the NYSLA voted to revoke the license, noting, “I think I know what a wine tasting is,” and that Vineyard 48′s DJ, dancing, and nightclub atmosphere did not fit such definition.

Despite the SLA’s findings, the court in Joseph Paul Winery v. New York State Liquor Authority, 101755/2013, held the NYSLA ignored its own due process protections as well as the Administrative Procedure Act (“APA”) by allowing complainants to testify before the NYSLA’s governing board without giving prior notice to Vineyard 48. Further, the witnesses were not sworn in, nor was Vineyard 48 granted the opportunity to cross examine the witnesses. Justice Ling-Cohan noted that the NYSLA’s allowance of unsworn testimony outside the record violated the winery’s due process rights. 

Further, the court noted that, despite the APA’s requirement that the NYSLA issue regulations defining permissible activities by farm wineries, none had been adopted by the NYSLA since 1974 (the year the Farm Winery Act was originally passed). In other words, the statute as written permits wine tastings but does not define the term or prescribe any requirements other than the proprietor be personally present and only New York State-produced wines can be poured. The judge noted that the permissible activities were extremely broad. Currently, the statute is written such that a farm winery may “engage in any business on the licensed premises subject to such rules and regulations as the NYSLA may prescribe.” Id. The judge particularly noted that, while the NYSLA’s chairman may “know what a wine tasting is . . .  unless petitioner and the wine-making community are also mind readers, his personal and subjective opinion as to how to conduct wine tastings” was immaterial in the absence of any duly enacted regulations on behalf of the NYSLA. Id. As a result, the court held that the charges be dismissed as void for vagueness.  

The court said that “the extreme penalty of revocation, in the absence of any prior prosecutions of violations or notice of objectionable conduct” was unwarranted for the three remaining charges. Instead, the court reasoned, if the NYSLA were to issue a penalty, the penalty needed to be lesser than revocation.

This is an interesting result, especially given the upcoming license revocation hearing scheduled for Empire Wine. In September, Empire brought suit against the NYSLA in a New York court, which dismissed the suit in November. While the suit against the NYSLA was not dismissed on the merits, Empire was instructed to exhaust administrative remedies first. A dismissal of this type does not preclude the retailer from bringing a suit against the NYSLA once administrative remedies are exhausted, and Empire contends that the company is prepared to fight the NYSLA going forward. If, after administrative remedies are exhausted, Empire brings suit agains the NYSLA again, it is curious how a court might interpret the statute upon which the NYSLA currently relies to support its argument in favor of jurisdiction over out-of-state shipments of wine by a New York licensed retailer. In the above case, the court dismissed the NYSLA’s charges as void for vagueness, considering the absence of duly enacted regulations on behalf of the NYSLA. In the Empire case, the retailer argues that the statute at issue is also vague—but this time, in the context of out-of-state wine shipments and “improper conduct” on behalf of a licensee or permittee. For more information on the Empire Wine lawsuit against the NYSLA, please see Retailer Empire Wine Sues New York State Liquor Authority: Direct Shipping and Court Dismisses Empire’s Lawsuit Against NYSLA.

Update: After the publication of this article, the revocation hearing for Empire Wine was rescheduled from December 3rd to January 23rd. This is the second time the hearing has been delayed (the original hearing was scheduled for October 23rd). Read more at Empire Wine Hearing Delayed After FOIL Appeal.

For more information on New York State wine or alcohol law, or establishing a winery, brewery, or distillery in New York, 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 Wine Law Blog Top 100 Blawgs American Bar Association On Reserve Named Top 100 Blawgs by American Bar Association JournalIt is truly an honor to share that On Reserve was named one of the top 100 legal blogs or “blawgs” of 2014 by the American Bar Association Journal (“ABA”). This nomination is incredibly exciting for On Reserve, which was just added to the ABA’s blog directory this last year. From the ABA directly:

No, we don’t just go through the 4,000-plus blogs in our directory and consult a Magic 8 Ball to decide what to add or scratch off our list. We remember the blogs that have tipped us off to breaking news and the bloggers who have compelled us to write about their innovative ideas.

And over the summer, we cue readers—and other bloggers—to write in and let us know about their favorites: When we can see their love for a blog is real and not a marketing hustle, it catches our attention.

If you appreciate the dedication to a “niche” practice, please take some time and vote for On Reserve on ABA’s Blawg Top 100 site. On Reserve is listed under the “niche” category.

A significant thank you to all of those who continue to make the wine world (and the wine law world) stimulating and worth writing about. It is a true honor to not only be part of but document the legal overtones of the wine industry. I am delighted to continue recording the legal advancements and strifes to come.

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Court Dismisses Empire’s Lawsuit Against NYSLA

A New York State Supreme Court dismissed a lawsuit launched by Empire Wine against the New York State Liquor Authority (“NYSLA”). In an 11-page ruling, Justice George Ceresia rejected Empire’s complaint that the statute upon which the NYSLA is relying is excessively vague, and denied Empire’s request for a preliminary injunction preventing the NYSLA from pursuing action. Judge Ceresia indicated that, “On its face, the Court is of the view that [NYSLA] possesses abundant statutory authority to commence and maintain a license revocation proceeding.”

The retailer originally filed suit against the NYSLA in September, shortly after the agency issued a letter to Empire stating the retailer violated a state regulation that allows the NYSLA to revoke, cancel, or suspend a liquor license due to “improper conduct” of the licensee. See Retailer Empire Wine Sues New York State Liquor Authority: Direct Shipping. In its letter, the NYSLA cited Empire for shipping wine directly to consumers in states that bar direct shipment of wine to consumers or require out-of-state retailers to obtain a license. In the suit filed against the NYSLA, Empire argued that New York had no jurisdiction over out-of-state wine sales, the charges brought against Empire violated the Constitution’s Commerce Clause, and that 9 NYCRR 53.1(n) was unconstitutionally vague because the regulation does not mention out-of-state shipping and does not provide licensees notice of what “improper conduct” the regulation governs. Additionally, Empire alleged that NYSLA is is “precluded from asserting jurisdiction and authority over the shipment of alcoholic beverages destined for distribution to and consumption by consumers outside the State of New York, even when the shipment originates in New York.” See Empire Wine & Spirits LLC v. New York State Liquor Authority. Effectively, Empire argued that the Constitution prescribes the federal government—and not individual states or their agencies—with the authority to regulate interstate commerce.

The court did not dismiss Empire’s case on the merits, and instead instructed the retailer to exhaust administrative remedies before commencing action in court. It is not unusual for a court to request that administrative remedies be exhausted, and a demand for such does not bar Empire from bringing suit should the retailer still be dissatisfied after its revocation hearing. A license revocation hearing before the NYSLA is scheduled for December 3rd.  According to outside sources, Empire seems determined to pursue suit agains the NYSLA and continue to ship wine directly to out-of-state consumers. See Empire Wine ‘Will Continue to Fight’ Liquor Authority

As more and more states open their borders to direct shipping of wine by wineries, the pathway for retailers remains less defined. New York is one of many states that currently prohibit retailers from directly shipping wine to consumers. The NYSLA’s chairman noted that the Authority will be pursuing similar cases against each retailer who also shipped wine directly to consumers in the 37 states that currently prohibit such (on behalf of retailers). Id. It seems that the battle may have only started for retailers.

For more information on New York State wine or alcohol law, or establishing a winery, brewery, or distillery in New York, 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 a recent TTAB decision, the Board found that Arcata was not primarily geographically deceptively misdescriptive of wine. The Applicant, D’Andrea Family Limited Partnership, sought to register the mark ARCATA in standard character form for “Wine” in International Class 33. In re D’Andrea Family Limited Partnership, Serial No. 85834204 (Oct. 15, 2014) [not precedential]. Originally, the Examining Attorney refused registration of the mark under the Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3), on that ground that the mark was primarily geographically deceptively misdescriptive of wine. Applicant filed a request for reconsideration, which the Examining Attorney denied, and a notice of appeal.

A mark that is primarily geographically deceptively misdescriptive is not registrable as per § 2(e)(3) of the Trademark Act. A mark is considered to be primarily geographically deceptively misdescriptive if:

  1. The primary significance of the mark is a generally known geographic location;
  2. The consuming public is likely to believe that the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place; and
  3. The misrepresentation would be a material factor in a consumer’s decision to purchase the goods.

In re Miracle Tuesday LLC, 695 F.3d 1339, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012); In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003).

The Board found that the primary significance of ARCATA was that of a generally known geographic location (i.e., in northern California) “neither obscure nor remote”; and, while the Applicant admitted that Arcata is a geographical location within California, its wine was not produced within Arcata. In re D’Andrea Family Limited Partnership at 4. As such, the remaining questions on point were: (1) whether consumers would believe that Applicant’s wine originated from Arcata (goods/place association), and (2) whether this incorrect impression would be a material factor in consumer’s decision to purchase the goods. Id. (emphasis added).

Before examining the evidence at hand, the Board clarified the finding of a goods/place association: An actual goods/place association is not required to be established by the PTO; instead, a reasonable predicate must exist for the PTO’s conclusion that “‘the public would be likely to make the particular goods/place association on which it relies.’” Id. (citing 104 USPQ2d at 1333 (quoting In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003) and In re Loew’s Theatres, Inc., 769 F. 2d 764, 226 USPQ 865, 868 (Fed. Cir 1985))). This is a significantly lower threshold. Further, the Board noted that finding a goods/place association often involves “little more” than proving a consumer identifies the place as the known source of the product. Id. at 5 (citing In re Les Halles de Paris J.V., 334 F.3d 1371, 1374 [67 USPQ2d 1539, 1541] (Fed. Cir. 2003)). This resolution is important, as the bar for determining whether a goods/place association exists is more easily met as opposed to if the bar were “an actual” goods/place association.

The Examining Attorney produced evidence of three wineries with addresses in Arcata, California (one of which had a tasting room in Arcata). In determining whether a goods/place association existed, the Board noted that it was not necessary to establish if a place was well known for the foods at issue (i.e., if Arcata was well known for wine), but it was sufficient to show only a reasonable basis to conclude that the public is likely to believe the mark at issue identifies the place of origin of the goods. Id. As a result, the Board determined that the evidence indicating Arcata is the site of several wineries was sufficient to meet the reasonable basis requirement and, thus, there was a requisite goods/place association (i.e., that a customer who saw ARCATA, the mark at issue, would likely believe the wine originated from Arcata, California).

After establishing the goods/place association, the Board moved onto the next issue: materiality, or whether a consumer’s misimpression would be a material factor in the consumer’s decision to purchase the goods. The Board noted, to establish materiality, a substantial number of “relevant” consumers must be likely to be deceived by the mark’s misrepresentation of a goods/place association (i.e., enough to lead the consumer to purchase the product). Id. at 6. Unlike the threshold in the goods/place association, the materiality test focuses on the likelihood of actually misleading the public (i.e., because the finding of a geographically deceptive misdescriptive mark precludes the mark from registration). Id. 

In this particular appeal, the Board examined whether the Examining Attorney demonstrated that Arcata is “noted for” wine; that wine is a “principal product” of Arcata; that wine is a product “traditionally originating” in Arcata; or that a substantial portion of customers for wine “would be materially influenced in the decision to purchase wine by a misrepresentation that the goods originate in Arcata.” Id. at 7. To determine if the Examining Attorney met this threshold, the Board reviewed various entries for Arcata, Humboldt County, and Wine Country (California) from sources like Wikipedia and The Columbia Gazetteer. The references indicated a limited, if any, wine presence or association with the geographical location of Arcata. Even though the Examining Attorney argued that Humboldt County wines are distinctive and such characteristics of Humboldt County wines can be attributed to wines from Arcata (since Arcata is located within Humboldt County), the Board determined that the evidence submitted did not support the Examining Attorney’s contention. Specifically, the Board reasoned that evidence submitted showed that the wineries located within Arcata obtained their grapes from other regions (e.g., Napa Valley and Sonoma County), and indicated that Arcata was not suitable for grape growing. Id. at 11. Further, the Board noted that Humboldt County is “a very large area that is not particularly noted for its wines.” Id. at 12. As a result, the Board determined the record did not indicate customers would be mislead to purchase a wine because such was made from grapes grown in Arcata, thus not meeting the burden for for establishing materiality. The Board refused any determination on its behalf as to whether the name “Humboldt” would induce consumers to purchase wine, but instead maintained that the fact ARCATA is present within Humboldt County is insufficient to induce a consumer to purchase wine. Thus, the Board reversed the Examining Attorney’s refusal to register the mark ARCATA.

Based on the Board’s determination in the above appeal, it seems only likely that the Applicant will seek registration of ARCATA. Arcata is not, as the Board noted in its decision, an appellation of origin nor an American Viticultural Area (at least, not at this point in time). The above story would have likely unfolded quite differently had an appellation of origin or American Viticultural Area been involved. Despite Arcata’s current status, it is conceivable that Arcata could become an American Viticultural Area should the area meet the requirements established in 27 CFR Part 9 for petitioning to establish a new American Viticultural Area. While the current characteristics of Arcata may not meet TTB’s requirements for a new American Viticultural Area, in theory, it seems possible that Arcata could, in time, change enough so to comply with 27 CFR Part 9, estbalishing itself as an American Viticultural Area. At that point, how would a previously registered mark (i.e., such as ARCATA) come into play, especially given the facts outlined above (i.e., that the wine bearing the mark ARCATA was not produced in nor from grapes grown in Arcata)? I am sure this is a question that has been visited in the past, but I still find it rather curious how such a scenario would carry itself out.

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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On November 13, 2014, Governor Cuomo signed the Craft New York Act, a craft beverage law that cuts burdensome restrictions and eases marketing requirements for craft beverage producers. Additionally, to further develop New York’s growing craft beverage industry, Governor Cuomo also launched the Craft Beverage Grant program, which creates a $2 million Craft Beverage Marketing and Promotion Grant Program and a $1 million Craft Beverage Industry Tourism Promotion Grant. The new law and grant program are part of a promise made on behalf of the Governor at New York’s second Wine, Beer, Spirits & Cider Summit to further support and provide resources for the state’s growing craft beverage industry. Specifically, the Governor acknowledged:

New York produces some of the best wine, beer, spirits and cider in the world—an industry which not only creates jobs but supports farmers and brings in tourism dollars across every corner of the state. This new law builds upon this administration’s ongoing efforts to promote this industry by cutting red tape, reducing burdensome regulations and removing artificial barriers that stifled growth. New York is truly open for business, and I thank my partners in the legislature for their hard work in making this a success for all of our craft beverage businesses.

The Craft New York Act will take effect thirty days after November 13th. The new law will provide New York craft beverage producers with a significant number of benefits, including the following:

  • Producers can conduct tastings and serve “by the bottle” and “by the glass;”
  • Farm distilleries will be permitted to increase the number of retail outlets where they can sell and offer samples of their products;
  • Reducing the food requirement that must be met by manufacturers when providing tastings or consumptions on the premises;
  • Allowing farm distilleries to obtain a permit to operate a branch office, thus eliminating the need for a separate license for the branch office; and
  • Reducing costs for small manufacturers by increasing the production cap and permitting the production of more product without increased fees.

The Craft Beverage Marketing and Promotion Grant Program were instituted to enhance the profile, awareness, and sales of New York’s craft beverage industry by providing funds for marketing and promoting New York State craft beverages. As much as $500,000 can be awarded to eligible not-for-profit organizations to assist in covering the costs related to marketing the craft beverage industry, including:

  • The purchase of recognized media advertising;
  • Production costs of print collateral and audio/visual;
  • Industry related tours, marketing materials; and
  • Website design, development, and updates.

The State’s Craft Beverage Industry Tourism Promotion Grant will help grow tourism across New York State by promoting destinations, attractions, and special events explicitly related to the craft beverage industry. Working capital funding of up to $250,000 can be awarded by Empire State Development for marketing-based tourism projects intended to create or retain jobs, increase tourism in the craft beverage industry and attract visitors to New York State.

New York State’s craft beverage industry is growing dramatically and, with the help of legislative and funding initiatives like the above, shows no sign of stopping. If you are thinking about getting involved on the production side—whether as a distiller, brewer, or vintner—there truly is no better time than the present. The reductions in regulatory hurdles, as well as the reduced fees for craft or farm licenses, provide a great opportunity for smaller or startup businesses in the beer, wine, or spirits industry.

For more information on New York State wine or alcohol law, or establishing a winery, brewery, or distillery in New York, 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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