trademark issues and developments in the alcoholic ... · •in re tin roof brewing company, serial...

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Trademark Issues

and Developments In

the Alcoholic

Beverage Industry

Eugene Pak, Esq.

Wendel Rosen Black & Dean LLP

CLE Wine, Beer & Spirits Law – Sept. 15, 2017

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More Brands, More Disputes – Winery Growth in US

• Number of Wineries in US is

9,217 as of June 2017

• Relatively stable growth year

over year

• 24.1 percent growth from

2012 to 2017

Year Number of Wineries

in US (mid year)

Percent

Change

2017 9,217 4.0%

2016 8,862 5.6%

2015 8,393 5.6%

2014 7,946 4.9%

2013 7,573 2.0%

2012 7,425 4.7% Source: Wines & Vines

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More Brands, More Disputes – Distillery Growth in US

• Number of

Distilleries in US is

1,825 (current

DSPs as of 2016)

• Tremendous

growth

• Craft whiskey

overtook vodka as

largest category

Source: The Whiskey Wash

(citing Coppersea Distilling)

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More Breweries, More Brands, More Disputes

Source: Brewers Association

• Brewery growth has

slowed from 31.6%

(2015) to 16.6%

(2016) to 5% (mid

2017)

• 5,562 breweries as

of June 30, 2017

(compared to 1,776

in 2011)

• 2,739 breweries-in-

planning

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More Brands, More Disputes – Brewery Growth in US

Source: Brewers Association

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Brewpubs Openings & Closings 2010-2016

Source: Brewers Association

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Microbreweries Openings & Closings 2010-2016

Source: Brewers Association

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Rise of Social Media – More Disputes

• Use of Social Media

• Small manufacturers can create

presence and brand awareness quickly

and inexpensively

• Geographically unrestricted

• First to use mark has

priority/ownership, but a subsequent

“junior” user can acquire rights in mark

in another geographic market

• Registration – nationwide rights even if

only selling in a few states

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Likelihood of Confusion: The DuPont Factors

In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973)

1. The similarity or dissimilarity of the marks in their entireties as to

appearance, sound, connotation and commercial impression;

2. The relatedness of the goods or services;

3. The similarity or dissimilarity of established, likely-to-continue trade

channels;

4. The conditions under which buyers purchase the goods or services, i.e.

"impulse" vs. careful, sophisticated purchasing;

5. The fame of the senior mark (see recent INSIGNIA wine case, Joseph

Phelps Vineyards v. Fairmont Holdings, 122 USPQ2d 1733 (Fed. Cir. 2017)) ;

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Likelihood of Confusion: The DuPont Factors

In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973)

6. The number and nature of other similar marks in use on similar goods;

7. The nature and extent of actual confusion;

8. The length of time during and conditions under which there has been

concurrent use without evidence of actual confusion;

9. The variety of goods on which a mark is or is not used (house mark,

“family” mark, product mark );

10. The market interface between the applicant and the owner of the prior

mark;

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Likelihood of Confusion: The DuPont Factors

In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973)

11. The extent to which the trademark owner has a right to exclude others

from use of its mark on its goods;

12. The extent of possible confusion (i.e., whether de minimis or

substantial); and

13. Any other established fact probative of the effect of use.

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Trademark Disputes

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Trademark Disputes

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Trademark Disputes (Bear Republic v. Central City Brewing)

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Trademark Confusion – TIN ROOF BREWING

•In re Tin Roof Brewing Company,

Serial No. 86598212 (2017)

•USPTO refused to register mark for

beer due to confusion with: 1) TIN

ROOF for “wine,” and 2) THE TIN

ROOF for “bar and restaurant

services” “serving food and drinks”

and “tavern services”

•Appeal pending

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Trademark Confusion – HOODWINKED

•In re Fetzer Vineyards, Serial No.

86789970 (June 2017)

•USPTO refused to register mark for wine

due to confusion with identical mark for

beer.

•Not enough to show top breweries do not

make wine

•Be careful what you wish for.

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Trademark Confusion – Beer v. Wine

•Related goods? How many wineries make beer?

How many breweries make wine? Would consumers

think the same company is making both?

•Marks that co-exist for beer and wine

•Strength of mark

•Is it a house mark or not?

Source: Erik Pelton (www.erikpelton.com)

(2011)

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Trademark Confusion – Beer and Restaurant Services

• In re Iron Hill Brewery, Serial No.

86682532 (TTAB July 2017)

• USPTO initially found THE

CANNIBAL for beer and THE

CANNIBAL for restaurant services

were confusingly similar

• Applicant appealed; TTAB reversed

• Where goods/services are not the

same, “something more” is required

to find confusion.

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Trademark Confusion – Beer and Energy Drinks

• Tap It Brewing Co. LLC v. Tap or

Nap LLC, Proceeding No.

91208370 (TTAB Nov. 2016)

• TAP IT for beer and TAP IT for

energy drinks

• Beer and energy drinks sufficiently

related

• Energy drink company had initially

included “beer” in its identification

of goods

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Trade Dress – Bottle shape

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• Reg. No. 3075812

• “The mark consists of three-

dimensional configuration of a bottle

that is used to contain the goods, as

well as a label design and protruding

words and designs. The label design

with ridged edges is claimed as a

feature of the mark. The protruding

words, BULLEIT BOURBON FRONTIER

WHISKEY, the protruding line below

BULLEIT BOURBON, and the four

protruding dots below FRONTIER

WHISKEY are all also claimed as

features of the mark.”

Trade Dress – Bottle features

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Trade Dress – Bottle shape

Diageo North America v. Sazerac Company Inc. 16-CV -09747 (Dec. 6, 2016 S.D.N.Y.)

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Trade Dress – Bottle shape

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Trade Dress – Bottle shape

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• Diageo North America v.

W.J. Deutsch & Sons Ltd.

(June 6, 2017 S.D.N.Y.)

• Reg. No. 3075812

• Bottle shape dispute (trade

dress)

Trade Dress – Bottle features

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Trademark Disputes Saeilo Enterprises v. Alphonse Capone Enterprises

• Saeilo Enterprises, Inc. v.

Alphonse Capone

Enterprises (Case No. 1:13-

CV-02306) (N.D. Ill. 2014)

• Serial No.

86374328 for

“spirits; wine” by

Saeilo Enterprises

filed August 22,

2014

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Trademark – Label Dispute

• Captain Morgan (Diageo)

v. Admiral Nelson (Heaven

Hill) (Canada)

• Similar theme and look

• Protect label

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• In re Bay State Brewing Company, Inc.,

117 USPQ2d 1958 (TTAB 2016)

(precedential decision)

• USPTO may reject trademark consent

agreements between parties and deny

registration

• Need to show in your agreement that

there would be no confusion if marks

co-existed

• Geographical limitation (concurrent use)

Trademark Consent Agreements

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Trademark – Primarily Merely A Surname

•Opp. Nos. 91207224 and

91207225 (TTAB Aug. 2.

2016)

•Acquired Distinctiveness

•(Supplemental Register)

• Dr. Bruce S. Schlafly v. The Saint Louis

Brewery, LLC, and Phyllis Schlafly v.

The Saint Louis Brewery, LLC

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Trademark – Intent to Use Applications

• Heineken Asia Pacific Pte Ltd. v. Claypool

(TTAB Sept. 2016)

• Intent to use a mark must be a “bona fide”

intent

• Intent is determined by objective criteria

and evidence, not subjective intent;

create a paper trail

• TIGER v. TIGER SHARK

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• In re Tri Vin Import, Inc., Serial No.

896257453 (TTAB March 2017)

• USPTO did not allow amendment of

mark from VINA DEL PASO to VINO

DEL PASO for wine

• Is it a “material” alteration that would

necessitate re-publication of the mark?

Trademark – Amending A Trademark

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• In re Big Heart Wine, Serial No.

86376188 (TTAB Jan. 2017)

• 100 PERCENT WINE confusingly

similar to CENTO PER CENTO for wine

• Test: would the “ordinary American

purchaser,” who is familiar with the

foreign language, translate the foreign

mark into English?

Trademark – Doctrine of Foreign Equivalents

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Matal v. Tam (The Slants)

• US Supreme Court, unanimous

decision, 582 U.S. ___ (2017),

finding that Lanham Act Section

2(a)’s bar on “disparaging”

trademarks was unconstitutional

under the First Amendment.

• Allowed registration of the mark

THE SLANTS; use of mark was not

at issue

• The Washington Redskins

trademark case

The Slants

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In re Tam (The Slants) – Supreme Court case

• Federal TTB regulations and state

laws on obscene or indecent alcohol

beverage labels may also be in

jeopardy.

• RAGING BITCH matter, Flying Dog

Brewery v. Michigan Liquor Control

Commission (6th Cir. 2015)

• ANGELPISS, BITCH IN HEAT

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Immoral, Deceptive or Scandalous Marks

• NUT SACK DOUBLE

BROWN ALE • In re Engine 15 Brewing, Serial No.

86038803 (TTAB 2015)

• Section 2(a) bars registration of a

mark that “consists of or comprises

immoral, deceptive, or scandalous

matter, or matter which may

disparage or falsely suggest a

connection with persons, living or

dead, institutions, beliefs, or

national symbols, or bring them into

contempt, or disrepute

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Craft v. Crafty or Faux Craft

Shock Top Brewing

Blue Moon Brewing

Trouble Brewing

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Craft v. Crafty or Faux Craft

AB InBev

MillerCoors

WalMart

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Still “Craft”? (Breweries acquired by AB InBev)

• Goose Island (2011)

• Blue Point (2014)

• 10 Barrel (2014)

• Elysian (2015)

• Golden Road (2015)

• Breckenridge (2015)

• Four Peaks (2015)

• Devil’s Backbone

(2016)

• Karbach (2016)

• Wicked Weed (2017)

Graphic by Spoiled Beer Brat

Productions

(See PorchDrinking.com)

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Still “Craft”? (Breweries acquired by AB InBev)

Graphic by Mystery Brewing

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Certification Mark for Independent Craft Beers

• To certify: “that the goods/services provided

have been produced by a brewery that is a

Craft Brewer as defined by the Brewers

Association's certification standards, holds a

valid TTB brewers

notice, and has

provided a signed

License Agreement.”

• Serial No. 87523409

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False Labeling Cases

• “Craft” cases: Blue Moon, Walmart

• Handmade cases: Tito’s Vodka

• Geographic Origin disputes:

Sapporo beer, Kona Brewing,

HAVANA CLUB

• Wine counterfeiting

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HAVANA CLUB dispute

• Bacardi v. Cubaexport

(Pernod Ricard)

• Case first filed 2004

• Reg. No. 1031651 (1976)

(owned by Cubaexport),

recently renewed

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Certification Mark for TEQUILA

• TEQUILA registered as a certification mark

• Luxco, Inc. v. Consejo Regulador del

Tequila, A.C. (Jan. 23, 2017) (TTAB) • Application first filed in 2003

• Luxco filed request for appeal (de novo review) in

E.D. VA

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Marijuana Marks

• Federal policy prohibits marijuana trademarks

(See In re Morgan Brown) (TTAB 2016)

• Alcohol beverage trademarks with references

to marijuana

• State laws

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Marijuana Marks

• Federal policy prohibits marijuana trademarks

(See In re Morgan Brown) (TTAB 2016)

• Alcohol beverage trademarks with references

to marijuana

• State laws

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Questions?

Eugene M. Pak

epak@wendel.com

@beerattorney

www.linkedin.com/in/eugenepak1

(510) 834-6600