Winery Trademarks: Selecting, Protecting & Enforcing Your Brands. February 18, 2017

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1 Winery Trademarks: Selecting, Protecting & Enforcing Your Brands February 18, 2017

2 Winthrop & Weinstine 2 Representing over 75 breweries, wineries, cideries, and distilleries Entity Formation State Licensing & Other Regulatory Raising Capital (Traditional & Crowdfunding) Trademark Protection & Brand Management Distribution Agreements Mergers & Acquisitions Follow Us on

3 Our Agenda 3 What Is a Trademark Selecting Trademarks Protecting Trademarks Using Trademarks Enforcing Trademarks

4 The Problem 4 Unlike the supply of baby names that is replenished whenever a celebrity couple names their kid after a direction or a piece of fruit, the number of beer names is finite. [..] It s difficult to select a beer name that hasn t already been slapped on a label. Thrillist, July 21, 2016 Breweries are increasingly finding themselves at odds with peers across the country, turning to legal battles to protect beer and brewery names from trademark theft. Wall Street Journal, July 10, 2016

5 The Problem 5 Any instance where consumers are likely to be confused by the two marks existing in the market together Case law says that beer is related to cider, wine, & spirits for purposes of determining confusion

6 The Problem 6 Before your winery even opens, a cidery sends you a letter asking you not to use the name You release a new wine and a brewery in Arizona contacts you to stop using a name similar to their registered trademark You have an opportunity to expand into another state, but a winery or brewery is using the same or similar name there

7 7 The Solution 1. Select a strong mark, while considering potential conflicts 2. Protect your mark through appropriate filings 3. Use your mark appropriately 4. Enforce your mark thoughtfully and with purpose

8 What is a Trademark?

9 What is a Trademark? 9 Any word, name, symbol, or device, or any combination thereof, used by a person or entity to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the source of the goods.

10 Types of Trademarks 10 CAMUS BAREFOOT CHATEAU ST. CROIX WORD DESIGN / LOGO NON-TRADITIONAL

11 Selecting Trademarks

12 Selecting Trademarks 12 BRAND MESSAGE Does the mark fit into your overall messaging and positioning? Does it communicate your brand message? TARGETED CONSUMERS Who are you targeting and are you distinguishing yourself from others? STRENGTH OF MARK Distinctive Marks are more protectable than Descriptive Marks. AVOID INFRINGING OTHERS Is the mark too similar to marks used by your competitors? Will consumers be confused by the mark in light of others?

13 Spectrum of Distinctiveness 13 Generic Descriptive Suggestive Arbitrary or Fanciful Aspirin Elevator Minnesota Winery Alborino Harvest Red Grape Smash Xerox Yellow Tail Wine Engel Winery More descriptive, Less protection More distinctive, More protection

14 Trademark Infringement 14 Is there a likelihood of confusion by consumers as to source or sponsorship of the goods Similarity of Marks Similarity of Goods or Services Similarity of Trade Channels Fame of Prior Mark Use of Similar Evidence of Buyer Other Marks by Third Actual Sophistication Factors Parties Confusion

15 Likelihood of Confusion 15 Identical mark used on similar goods - Beer and wine - Cider and beer - Beer and distilled spirits - Wine and vodka - Blonde Ale and Shandy

16 Likelihood of Confusion 16 Similar mark used on similar goods - Beer and wine - Cider and beer - Beer and distilled spirits - Wine and vodka - Blonde Ale and Shandy

17 Likelihood of Confusion 17 Similar mark used on related goods - Beer and jellies or jams - Brewery services and restaurant services - Alcoholic beverages and energy drinks

18 Searching Trademarks 18 USPTO INTERNET INDUSTRY SITES

19 19 Selecting a Mark Stronger marks are arbitrary and fanciful, weaker marks are descriptive Conduct an appropriate search in the USPTO records and a Google search for similar marks, including marks used on ciders, beers, wines, and spirits Consider whether any results may affect where you distribute or your right to use

20 Protecting Trademarks

21 Protection in the U.S. 21 USE ONLY STATE FILING FEDERAL FILING Rights in the U.S. begin based on use of a mark in commerce.

22 22 Protecting the Mark Option # 1: Use Only Pros: - No legal fees for protection Cons: - Rights are limited to the specific area where you have used the mark - Must prove ownership to assert those rights \ - Cannot use - May have limited ability to distribute outside of current area

23 Protecting the Mark 23 Option # 2: State Registration Pros: - Rights in the entire state Cons: - No priority of rights outside the state, even in a bordering state - Must use the mark before filing for protection - Costs money - Cannot use

24 Protecting the Mark 24 Option # 3: Federal Registration Pros: - Can file as an intent to use application - Nationwide priority of rights, even if you have not used it yet - Can use the once registered - Ideal for mergers & acquisitions - Keeps distribution channels broadly open Cons: - Costs money - Must have use in interstate commerce

25 Filing Strategy 25 Cidery Name / Logo ( House Brand ) Year-Round Seasonal/Special Other Indications of Source

26 Types of Trademark Filings 26 STANDARD CHARACTER STYLIZED DESIGN

27 Types of Trademark Filings 27 STANDARD CHARACTER STYLIZED DESIGN

28 U.S. Application Process 28 Filing Use or Intent-to Use Published for Opposition Registration Granted Examination About 3-6 months after filing Statement of Use About 7 months after publication (extendible) Either at filing for use-based apps or to comply with statement of use requirement for apps based on an intention to use, we will need: 1. an example of use of the mark of applied for goods or services for each class; 2. date of first use anywhere on those goods and services; and 3. date of first use in interstate commerce either at filing

29 Specimens for Wines 29

30 Benefits of Using An Attorney 30 Avoids pitfalls with application filing with the Trademark Office Experience handling refusals from the Trademark Office Helps keep track of deadlines for you

31 Maintaining Registrations in the U.S. 31 Registration Granted Declaration of Use Between 5 th and 6th Anniversary of Registration Date Declaration of Incontestability 5 years of continuous use 1 st Renewal Between 9 th and 10 th Anniversary Further Renewals Every 10 years after 1 st Renewal For any of the required filings, we will need: 1. Example of use of the mark of at least one of the goods or services for each class; 2. Confirmation of use

32 Using Trademarks

33 Using Trademarks 33 Use it or you lose it. Trademarks not used for a period of 3 years are legally abandoned. Provide correct notice. Use the symbol next to registered marks, the TM symbol next to unregistered marks. Trademarks should never be used as a noun. Trademarks should always be used like adjectives, never as nouns, in order to avoid the mark becoming the generic term for the product or service.

34 Enforcing Trademarks

35 Enforcing Your Trademark 35 Why do I need to enforce my mark? Scope of your protection diminishes as competitors use similar marks on similar goods

36 Enforcement Options 36 Options: 1. Opposing another s application while it is pending 2. Cancelling another s registration after it has issued 3. Trademark infringement lawsuit for registered and unregistered marks Standard : - likelihood of consumer confusion - Could claim fraud or that mark is generic, descriptive, or not used / abandoned Must have priority of right in the mark and allege harm in the other s use or registration of the mark All of these typically begin with some discussions and a cease & desist letter

37 Settling Disputes 37 There are options that keep your rights broad and allow for others to use similar marks Type of product being used with the mark Territorial limitations Seasonal v. Flagship Time limitations Licensing arrangements Assignment of the mark Collaborative agreements

38 38 Questions? Martha Engel Martha - mengel@winthrop.com mengel@winthrop.com Zach - zrobins@winthrop.com