TRADEMARKS AND BRANDING IN WINE

Transcription

1 TRADEMARKS AND BRANDING IN WINE MARCH 18, 2016 CHRISTOPHER J. PASSARELLI SR. INTELLECTUAL PROPERTY ATTORNEY DICKENSON, PEATMAN & FOGARTY T: LAW.COM

2 Disclaimer This is made available for general informational purposes only and none of the information provided herein should be considered to constitute legal advice.

3 FORMS OF INTELLECTUAL PROPERTY Patent Utility Patent, Design Patent Plant Patent, PVPA Copyright Trade Secrets Trademarks, Service Marks and Trade Dress

4 PATENTS Processes, machines, articles of manufacture, and compositions of matter which are: Novel Useful Nonobvious Design Patent protection for ornamental aspects of a product or package..

5 COPYRIGHT Creative works fixed in a tangible medium of expression Rights: Reproduction, Distribution, Derivative Works, Public Display, Public Performance Federal law applies Term: (Depends) Often lasts for the lifetime of the author plus 70 years

6 COPYRIGHT OWNERSHIP Author/Creator owns the copyright Web page, label, photographs, etc. Exception: Employee in the course of employment Commissioned Works Obtain Assignment of Rights!

7 TRADE SECRETS Information not publicly known, which has confers a competitive advantage and has value by virtue of maintaining its secrecy. Examples: Customer list Suppliers Production/Manufacturing processes Fertilizer application data Well location data

8 TRADEMARK/SERVICE MARK: WHAT IS IT? Word, Phrase, Slogan Symbol, Logo Picture, Image, Photograph Color, Shape, Smell Product or Packaging (aka Trade Dress) Virtually anything that serves as an Indication of Source

9 TRADEMARK POLICY CONSIDERATIONS Easy reference Business asset development Indication of Source Consistent quality Prevent False Advertising Prevent Confusion Prevent Unfair Competition Protect the Consumer

10 TRADEMARK HOW THEY ARISE In the U.S., trademarks arise from use in commerce. In much of the world, the rightful owner is the first to file a trademark application.

11 TRADEMARK PITFALLS How to lose your trademark rights: Generic usage Abandonment Crowding of the field Naked Licensing Illegal Activities

12 TRADEMARK DISTINCTIVENESS Trademark strength is based on distinctiveness the ability to indicate source. Generic not protected Descriptive informational, protected if the mark achieves secondary meaning Suggestive Arbitrary Fanciful A mark can become generic and lose its ability to function as a trademark.

13 TRADEMARK GENERIC TERMS Trademarks that became generic: Aspirin Cellophane Dry Ice Heroin Kerosene Linoleum Thermos Trampoline Videotape

14 TRADEMARK NOTICE Supercript or subscript: TM, SM or Notice of claimed rights/deterrent effect Effect on damages recovery Beware: Improper use of federal registration notice may be deemed fraudulent.

15 TRADEMARK REGISTRATION Some of the benefits of federal registration: Nationwide constructive use Presumption of ownership, validity Use of acts as a deterrent Federal Court jurisdiction +5 Minutes of sleep every night!

16 FEDERAL REGISTRATION PROCESS Filing Current Use v. Intent to Use Examination Office Actions & Information Requests Publication for Opposition Allowance for Registration Issuance of Registration Certificate Continued Use/Incontestability Renewal No Attorney Required? (57% v. 83% success)

17 REGISTRATION STATE TRADEMARK Alternative to federal registration PROS: Easier to obtain No interstate commerce requirement No Publication for Opposition CONS: No Presumption of ownership, validity Cannot use Will not necessarily prevent third parties from achieving federal registration

18 TRADEMARK USE Must be used on or in connection with the goods or services Affixed to the goods (e.g., label) or their packaging Website use in proximity to a means for ordering the goods or services Means to Request a Quote

19 TRADEMARK CLEARANCE #1 Misconception: The Secretary of State cleared my mark Preliminary knockout Search Full Search Willful infringement issue Tip: Bring alternatives Tip: Do your own search first No Search Is Perfect

20 CONFLICTING MARKS Pseudo Marks may be assigned to marks that have alternative spellings or meanings. Used as an additional search tool. E.g., YOU ARE GREAT v. URGR8 Phonetic Equivalents alternative spellings E.g., KWIXTART v. QUICK START Foreign Equivalents foreign translations E.g., EL JEFE v. THE BOSS

21 TRADE DRESS DEFINITION Total image or overall design or appearance of a product or its packaging. Includes size, shape, color, color combinations, texture and graphics All features be considered together, not separately Function elements NOT protectable OK if certain components are functional if the overall combination of features is not. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)

22 TRADE DRESS Packaging Trade Dress For single product or product line/family of products Product Trade Dress Product Configuration can serve as trade dress if it is inherently distinctive. Computer Care v. Service Systems Enterprises, Inc., 982 F.2d 1063, 1067 (7th Cir. 1992) Examples: Coca Cola, Maker s Mark

23 ISSUE: ALCOHOL RELATED GOODS Virtually all alcohol beverage products are considered related goods Beer/Wine/Distilled Spirits/Energy Drinks White Oak Vineyards & Winery v. White Oak Spirits LLC, Case No. 2:14-cv (CACD 2015) Vodka and wine found to be related goods.

24 GEOGRAPHICAL INDICATIONS Appellations of Origin American Viticultural Areas (AVA) Conjunctive Labeling Requirements E.g., Oakville - Napa Valley Misconception: TTB approved my label!

25 CERTIFICATIONS Certification Marks - Certifies nature or origin. E.g., Location or origin, Materials of construction Method or mode of manufacture of goods or provision of services Quality assurance Accuracy of the goods or services; and Union or other organization standards.

26 CERTIFICATIONS Examples: Organics: CCOF, USDA Organic, Oregon Tilth Sustainability: SIP Certified, Certified California Sustainable Winegrowing (CCSWP) Cannot certify yourself! The certifier cannot engage in production or marketing of the certified goods or services but must be competent to certify that any user has met the requirements.

27 CURRENT ISSUES Scandalous, disparaging subject matter Cannot be federal registered as a trademark with the USPTO Cases: In re Tam ( Slants case)(fed. Cir.) Blackhorse v. Pro-Football, Inc. (DCDC 2015) Cancelled WA Redskins TM regs (disparaging).

28 CURRENT ISSUES Trademark use must be lawful. Q: Is a COLA required for lawful trademark use? A: Not necessarily. Churchill Cellars, Inc. v. Brian Graham, Opp. No (TTAB 2012)

29 CURRENT ISSUES Relatedness of Goods Alcohol (liquor, beer & wine) Restaurant services Food (e.g. Allegash) Lesson: Search classes 32, 33 & 43 For trademark law, all alcohol is treated equally!

30 CURRENT ISSUES Internet Interstate Commerce Domain Enforcement Cybersquatting New gtld s:.wine/.vin Social Media issues False Association PR Campaigns

31 THANK YOU! CHRISTOPHER J. PASSARELLI SR. INTELLECTUAL PROPERTY ATTORNEY DICKENSON, PEATMAN & FOGARTY 1455 FIRST STREET, STE. 301 NAPA, CA TELEPHONE: LAW.COM LAW.COM