Trademark Issues and Developments In the Alcoholic Beverage Industry 1 Eugene Pak, Esq. Wendel Rosen Black & Dean LLP CLE Wine, Beer & Spirits Law Sept. 15, 2017
More Brands, More Disputes Winery Growth in US 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% 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 2014 7,946 4.9% 2013 7,573 2.0% 2012 7,425 4.7% Source: Wines & Vines 2
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) 3
More Breweries, More Brands, More Disputes 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-inplanning Source: Brewers Association 4
More Brands, More Disputes Brewery Growth in US 5 Source: Brewers Association
Brewpubs Openings & Closings 2010-2016 Source: Brewers Association 6
Microbreweries Openings & Closings 2010-2016 Source: Brewers Association 7
Rise of Social Media More Disputes Use of Social Media 8 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
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)) ; 9
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; 10
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. 11
Trademark Disputes 12
Trademark Disputes 13
Trademark Disputes (Bear Republic v. Central City Brewing) 14
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 15
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. 16
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? 17 Source: Erik Pelton (www.erikpelton.com) (2011)
Trademark Confusion Beer and Restaurant Services 18 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.
Trademark Confusion Beer and Energy Drinks 19 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
Trade Dress Bottle shape 20
Trade Dress Bottle features 21 Reg. No. 3075812 The mark consists of threedimensional 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 shape 22 Diageo North America v. Sazerac Company Inc. 16-CV -09747 (Dec. 6, 2016 S.D.N.Y.)
Trade Dress Bottle shape 23
Trade Dress Bottle shape 24
Trade Dress Bottle features Diageo North America v. W.J. Deutsch & Sons Ltd. (June 6, 2017 S.D.N.Y.) Reg. No. 3075812 Bottle shape dispute (trade dress) 25
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 26
Trademark Label Dispute Captain Morgan (Diageo) v. Admiral Nelson (Heaven Hill) (Canada) Similar theme and look Protect label 27
Trademark Consent Agreements 28 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 Primarily Merely A Surname Dr. Bruce S. Schlafly v. The Saint Louis Brewery, LLC, and Phyllis Schlafly v. The Saint Louis Brewery, LLC Opp. Nos. 91207224 and 91207225 (TTAB Aug. 2. 2016) Acquired Distinctiveness (Supplemental Register) 29
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 30
Trademark Amending A Trademark 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? 31
Trademark Doctrine of Foreign Equivalents 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? 32
Matal v. Tam (The Slants) 33 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
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 (6 th Cir. 2015) ANGELPISS, BITCH IN HEAT 34
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, 35 or disrepute
Craft v. Crafty or Faux Craft Blue Moon Brewing Shock Top Brewing Trouble Brewing 36
Craft v. Crafty or Faux Craft MillerCoors AB InBev WalMart 37
Still Craft? (Breweries acquired by AB InBev) 38 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)
Still Craft? (Breweries acquired by AB InBev) Graphic by Mystery Brewing 39
Certification Mark for Independent Craft Beers 40 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
False Labeling Cases Craft cases: Blue Moon, Walmart Handmade cases: Tito s Vodka 41 Geographic Origin disputes: Sapporo beer, Kona Brewing, HAVANA CLUB Wine counterfeiting
HAVANA CLUB dispute Bacardi v. Cubaexport (Pernod Ricard) Case first filed 2004 Reg. No. 1031651 (1976) (owned by Cubaexport), recently renewed 42
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 43
Marijuana Marks Federal policy prohibits marijuana trademarks (See In re Morgan Brown) (TTAB 2016) Alcohol beverage trademarks with references to marijuana State laws 44
Marijuana Marks Federal policy prohibits marijuana trademarks (See In re Morgan Brown) (TTAB 2016) Alcohol beverage trademarks with references to marijuana State laws 45
Questions? Eugene M. Pak epak@wendel.com @beerattorney www.linkedin.com/in/eugenepak1 (510) 834-6600 46