You recently started up a winery or distillery or are considering adding a new alcoholic beverage product to your current line. The Alcohol and Tobacco Tax and Trade Bureau determines whether you can label a particular alcoholic beverage “bourbon whisky” (Standards of Identity for Distilled Spirits, Code of Federal Regulations, Title 27, Part 5), but who determines if you can register the brand name you want to give to the bourbon? The U.S. Patent and Trademark Office (“PTO”) is authorized under the federal Lanham Act to decide if the name you have adopted for your alcoholic beverage is eligible for nationwide protection through a federal trademark registration.
One of the tests the PTO trademark examiners apply when considering a trademark application is whether the chosen mark is confusingly similar to a mark that has already been registered by another party or is the subject of a pending application with a filing date earlier than the new application. However, a mark is not necessarily confusingly similar to another mark simply because the marks are identical. The PTO considers a number of factors in determining confusing similarity. One such factor is whether the goods or services covered in the new application and prior registration are the same or are highly related to each other. That explains why there are co-existing federal registrations for the “Apple” trademark for computers, automobile dealerships, rice, and arranging travel tours, all owned by different companies. The PTO concluded that although the marks are identical the goods and services are not the same or are not highly related to each other.
Because the U.S. is a party to the Nice Agreement, a treaty that divides goods and services into 45 International Classes for the purposes of trademark registrations, applications to register U.S. trademarks must categorize the goods and services to be covered in the registration under one or more of those classes. Class 33 covers alcoholic beverages other than beer. Class 32 covers beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, and syrups and other preparations for making beverages. In the past, the PTO did not often find that marks for goods in Class 32 were confusingly similar to marks for goods in Class 33, and vice versa. However, there appears to be a trend in the PTO to refuse registration of marks for alcoholic beverages that are the same or similar to marks for beer or non-alcoholic beverages. The PTO is not only rejecting applications for wine names similar to other wine names, whiskey names similar to bourbon names, or brandy names similar to rum names. It is now more likely that the PTO will reject a wine name that is similar to a beer name, a flavored vodka name that is similar to a flavored water name, or a hard cider name that is similar to a sports drink name.
It is a good practice to obtain a clearance search before adopting a new trademark, to lessen the risk that you will be accused of infringement. The owners of both registered and unregistered marks can have superior rights to the mark you are considering, and you will not necessarily have access to those marks if you just do your own Internet search or USPTO database search. There are also state trademark registries in addition to the federal registry, and those also should be searched. Because of the PTO’s new habit of considering marks for beer and non-alcoholic beverages in determining the confusing similarity of a mark for alcoholic beverages, it is also a good practice to review whether the search report contains “hits” for such marks.
In addition to applying its own rules for examining applications, the USPTO pays attention to court decisions and decisions of the Trademark Trial and Appeal Board (“TTAB”), an administrative arm of the PTO that hears appeals from examiner refusals to register marks. The TTAB also hears oppositions by third parties who believe they will be harmed by registration of a mark approved by the PTO but not yet registered and cancellations brought by third parties who want to challenge an existing registration. The TTAB issues precedential decisions that are binding on all trademark applicants and non-precedential decisions that apply only to the particular parties in the appeal, opposition, or cancellation proceeding under consideration, although the arguments in them can be persuasive in other cases. The TTAB has long found beer, wine, and liquor marks to be highly related goods but has not adopted any firm rule that wine or other alcoholic beverages are related to non-alcoholic beverages for purposes of determining confusing similarity. However, decisions within the past few years more often than not find such relatedness to exist. Here are some examples:
- The mark HB, owned by Kysela Pere et Fils, Ltd. for wine, was rejected over the registered mark HB & Crown Design, owned by Staatliches Hofbräuhaus in München for beer. The examiner relied on a large number of registration showing that various entities registered a single mark for both beer and wine, along with Internet evidence showing that companies make and sell both wine and beer, demonstrating that the public is likely to believe that those goods originate from the same source.
- The application for the mark GOTT LIGHT & Wave Design, owned by Rehoboth Von Gott, Inc. for vitamin enriched water, carbonated water, and a variety of other types of water beverages, was opposed by Joel Gott Wines, LLC, owner of the registered marks GOTT and JOEL GOTT for wine. The TTAB concluded that wine and water are related goods, based on photos of water bottles bearing wine marks found in winery tasting rooms, and a number of third-party registrations covering both wine and water under the same mark. The TTAB also accepted evidence that water and wine are both sold in grocery stores, supermarkets and “big box” stores, in the same areas of those stores, and evidence that articles describe wine and water pairings for food.
- Maria y Adelina S.A., an Argentinean corporation, applied to register SAURUS for wines, distilled spirits, cordials, liqueurs, and aperitifs with a wine base. Gabriel Meffre, a French company, opposed the application based on its registered mark LAURUS for wines. The TTAB found that the public was likely to be confused by these highly similar marks for overlapping and highly related goods. The TTAB also took into account Gabriel Meffre’s argument that its wines are sometimes sold at restaurants and hotels, and that imbibing consumers have less ability than the general public to make distinctions among similar marks.
- Sierra Nevada Brewing applied to register BOCK NESS MONSTER for beer and was opposed by Monster Energy Company based on its many “Monster”-related marks for energy and sports drinks. The opposition did not result in a TTAB opinion because Sierra Nevada voluntarily abandoned its application.
- Proximo Spirits applied to register COCOMO for tequila and tequila-based prepared cocktails. The examiner rejected the application based on Kokomo Winery’s registered mark for KOKOMO for wine. The TTAB observed that the marks are phonetically identical and would sound the same when ordered in a bar or restaurant. Although the TTAB recognized that not even an unsophisticated consumer would mistakenly buy one expecting the other, it nevertheless concluded that consumers could believe that the two products had a single source, even if consumers believe that wineries only sell wine. Some third parties sell both wine and tequila and some restaurants have wine and tequila pairings for food or make cocktails containing both wine and tequila.
Another obstacle that may arise in naming an alcoholic beverage is the section of the Lanham Act that prohibits registration of scandalous, deceptive, immoral, or disparaging marks. The PTO rejected an application for LEFT NUT BREWING CO. for beers under that section. The examiner concluded that the mark was immoral or scandalous because it was a vulgar reference to the male genitals. However, the TTAB disagreed because the term “left nut” has other non-vulgar slang meanings, including “something of great value” and the “passenger sitting behind the driver.” The TTAB also noted that there were equally suggestive “Nuts” marks on the federal registry and that even a U.S. Senator referred to “left nut” in a published article without evidence that anyone took offense. The disparagement provision was declared unconstitutional by one federal appeals court and is under consideration by another, so the issue may eventually end up in the Supreme Court. However, the battle against vulgarity being waged in the PTO has not stopped breweries, wineries, and distilleries from participating in the recent trend toward adopting rude, crude, or suggestive names for their products.
The PTO will also register slogans as trademarks. Perhaps when you develop the name for your new product you can also invent a toast to be used as a tagline.