Helping Yourself Protect Your Brand
Author: by David E. Stoll
February 01, 2003
This article outlines self-help practices that you can quickly and easily use to maximize protection of your brand and minimize potential conflicts with someone else's brand.
Introduction
It does not matter how big or small you are. These self-help practices can be utilized by anyone from a sole proprietor with a single brand to large corporations with a portfolio of brands. By following these practices, you will save much time, money, and frustration in developing your wine brands.
Protecting any given brand often boils down to the following: you can either spend a couple thousand dollars early in the process to adequately protect your brand, or risk spending several times that amount in both time and money to deal with a conflict in the future. Worse yet, the future conflict may result in the loss of your brand.
1. The Most Common Problem - Conflict with Someone Else's Brand
The most common problem encountered with a wine brand is a conflict with someone else's brand.
New wine brands often run into conflict with established brands. The converse is also true; owners of established wine brands often encounter others trying to develop or make use of similar brands. In either event, these brand conflicts can be expensive, time consuming, and distract from other aspects of the business.
Because of this, brand owners should do all they can to minimize the possibility of a conflict with someone else's brand, both while they are in the process of deciding on a new brand, as well as throughout the use and exploitation of the brand.
2. Avoid Adopting Potentially Troublesome Brands
Clients are often emotionally attached to the potential brand names they provide to their attorneys for search and clearance. Even when potential conflicts arise in the search or clearance process, clients often still want to pursue the proposed brands. This is more often than not a costly mistake.
Pursuing a brand with potential conflict or protection problems associated with it from the outset rarely produces the desired consequences. Clients will typically spend much time and money either attempting to work out a conflict with someone else's mark or trying, often in vain, to protect the brand through trademark registration, only to ultimately find they cannot do so.
If you have not yet begun using a brand and potential conflicts are discovered in the clearance process, you are most likely better served choosing another brand. If you have already adopted and are using a brand when a potential conflict arises, the considerations are different as you obviously do not want to change your recognized brand unless you absolutely have to.
However, if you have not yet begun use of your brand and a potential conflict arises, you have to ask yourself how difficult or damaging it really would be to pick a new brand given that you have not yet invested a significant amount of time and money in developing the brand.
Though it takes time and money to come up with potential brand names, the investment is well worth the cost if it allows you to avoid brand conflicts down the road. Brands that are free of potential conflicts from the start are easier to protect and allow you to focus your time and money on building brand awareness rather than defending troublesome brands or spinning your wheels trying to obtain trademark registrations for such brands.
If you spend the necessary time and money to adequately protect your brand from the outset, you do not have to do it over and over again in the future. As stated before; you can either spend a little now or risk spending a lot later.
3. Perform Your Own Initial Searching
Before you invest time and money in a brand, or even in lawyers to help you clear a brand, you can easily and quickly perform some of your own initial clearance searching on your proposed wine brand.
By performing these initial searches you can often quickly eliminate potentially troublesome names and avoid delays and costs associated with having lawyers perform the initial searching for you.
Most of these initial screening searches can be performed for free on the Internet. Internet sites that are helpful for searching include:
- The USPTO Trademark Database
- The TTB Online COLA Database
- Basic Search Engines
- Wine-Specific Search Engines
a. The United States Patent & Trademark Office (USPTO) Trademark Database
The USPTO maintains a free searchable trademark database for all federal trademark registrations and pending trademark applications. You can easily enter your proposed brand names into this database and check to see whether anyone else has filed for protection of the same name or a similar name for wine. You should also conduct this search among other related goods or services that the PTO considers confusingly similar to wine, such as other alcoholic beverages (e.g., "beer" or "whiskey") or related services such as "restaurant services."
If someone has filed a trademark application on a brand name, that application or registration is a fairly good indicator that they believe the brand is worth protecting. It is also a good indication that your brand could have potential conflicts. Thus, you should think long and hard before pursuing a name someone else has protected or is trying to protect as a trademark.
Once you become familiar with the USPTO Trademark Database, you can further refine or tailor your search to suit your specific needs. For example, you can perform a broad search of all filed trademarks across all goods and services, or you can tailor your search to look for only trademarks that have key words such as "wine" in their goods or services descriptions, or for trademarks that fall within International Class 33, the class in which all wine and spirits marks are registered.
b. Alcohol and Tobacco Tax & Trade Bureau (TTB)'s Online COLA Database
Another very helpful free online database is the TTB's online Certificate of Label Approval (COLA) database. The TTB was recently spun out of ATF which is why many know of and still refer to this database as the ATF's COLA database.
This database contains records of all COLAs granted by the federal government since 1996. The database is by no means comprehensive of all existing COLAs, but it does provide an easy first step to check whether someone else is already using your proposed name as a brand for wine.
Searching the COLA database is easy. In the online form, you simply fill in the blanks for the categories on which you want to search. The most useful search category for clearing proposed brand names is the "Inclusive Name Search". The Inclusive Search will pull up any matching records whether the name is part of the brand, the winery or the COLA registrant (e.g., the bottling winery).
The COLA database can be misleading as to who is using what brands. COLAs list the name of the bottling winery as the COLA "Applicant", which is often not the actual owner of the brand. However, the usefulness of the COLA database lies in finding matching records, not necessarily determining who actually owns the brand. Matching records indicate a brand with a potential conflict.
The database does, however, provide other useful and specific information, such as the "Class/Type Code" that tells you whether the COLA is for beer (class 901), whiskey (class 100), table red and rose wine (class 80), and so on. If you become familiar with these codes, you can often gain valuable additional information about other's use of potentially conflicting brands, such as whether someone is using a brand for beer or for wine or for something else.
c. Search Engines (e.g., Google.com)
Although you can rarely, if ever, rely on completeness of results produced from any Internet search engine, it is very easy to perform a search of your proposed brands (or existing brands) and see whether any wine-related "hits" are found.
To minimize matches with completely unrelated industries (computer companies, clothing manufacturers, and whatever else may be on the web that has nothing to do with wine) you can tailor your search to look, for example, for your brand used in connection with common wine brand suffixes such as "… Cellars", "… Winery", "… Wines" or "… Vineyard."
To better focus the search, put quotation marks around your brand and the suffix of choice, e.g., "Your Brand Cellars." For most Internet search engines, this will limit the search to only those results that use the quoted phrase together. Otherwise, for example, every website containing simply "Cellars" can result.
There is a wealth of information readily and freely available on the Internet. Often times, when I am looking for a potential conflicting brand on behalf of a client, I easily stumble upon an entire website describing everything I could ever want to know about their wines, their winery, their family history, the names of their pets, and so on. To not take advantage of this extraordinary resource is to do your business a disservice.
d. Wine-Related Website Databases
(e.g., Wine-Searcher.com)
In addition to using generic search engines to help clear proposed brands, online wine-specific databases can be of assistance, especially if you are trying to locate a brand that you think may already exist.
WineSearcher.com is an example of such an online wine-specific database. This website is a worldwide database of where wines are available for sale. For instance, you can search for all places (in the database) where a particular brand in a particular year is sold in the United States. Again, like many other Internet databases, especially free Internet databases, the results are by no means comprehensive. Although this database is most useful for locating a wine brand that you know or think already exists, it is also useful a useful tool for clearing proposed names.
Although many wine brands are protected as registered trademarks (and therefore will show up in trademark searches), a majority of existing wine brands are not protected as registered trademarks and therefore will not show up in trademark searches.
Despite the fact an existing wine brand is not registered as a trademark, the brand has trademark rights on account of the brand's use in commerce. Rights in a trademark come from use of the trademark in commerce, not registration.
Generally speaking, a wine brand that is used but not registered will establish trademark rights to the brand that are geographically limited to the area where the brand has actually been used. On the other hard, a wine brand registered as a federal trademark will establish trademark rights to the brand throughout the entire country.
Thus, you must search non-trademark databases, such as the COLA database and general and wine-specific search engines when clearing proposed brands because, again, a majority of wine brands currently in use are not protected as registered trademarks.
Importantly, these initial screen searches are not a substitute for professional search services that your trademark attorney can provide. Even after you have made these initial inquiries for your brand, you should still contact an experienced trademark attorney who can order a comprehensive "full search" from a reputable search company (such as Thomson & Thomson) that searches trademark and non-trademark databases. A full search is especially highly recommended for proposed brands that are not yet in use.
4. Seek Registration of Your Brand As A Trademark
If you propose to use or are using a wine brand for commercial sale, you should consider trademark registration for the brand.
The principal advantages of federal trademark registration are nationwide priority and notice to third parties. One of the main reasons you register your brand as a trademark is to let the world know you are using that trademark as a brand for wine. In doing so, others will be less likely to adopt the same or similar trademark, especially in the United States where the law presumes that everyone has knowledge of existing federal trademark registrations. This is known as "constructive knowledge."
The concept of constructive knowledge in U.S. trademark law imposes a duty on third parties to perform a search of the U.S. federal trademark database before adopting a new brand. If your brand is already registered or even pending, it is much more likely third parties will choose a different brand.
If third parties do not perform a trademark search and adopt a confusingly similar brand after your registration has issued, you are presumed by law to have prior rights. Once you notify the third party of your prior rights, the third party will be much more likely to abandon use of the conflicting brand and choose a new one, than if your brand was not registered as a trademark.
The goal is to avoid or quickly defuse potential conflicts with your brand. Having a trademark registration, or even a pending trademark application for your brand, greatly helps accomplish this. Trademark registrations last forever so long as you continue to use the mark and you pay your renewal fees every five to ten years.
While it is true that trademark rights only come from use, not from registration, obtaining a trademark registration for your brand enhances those rights and, again, significantly helps in avoiding conflicts concerning your brand or quickly defusing conflicts that do arise with your brand.
No matter how long you have used your brand, or how many cases you have sold, or how broad you have distributed your wine, if you do not have a trademark registration for your brand it is much more difficult to avoid disputes or to resolve disputes when they occur.
Without a trademark registration, you will carry the full burden of convincing the other party that you have established rights to the brand. The smaller a producer you are, or the smaller your distribution, the more difficult a time you will have convincing the other party that you have established sufficient rights to the brand that they should abandon their conflicting brand.
In such cases, without a registration you will have to resort to business records, invoices, and federal and state permit records, such as COLAs, fictitious business name statements and Basic Permits, to show the other party when you began using your unregistered brand. This can be a frustrating, time consuming, distracting, and expensive process that can often be avoided if your brand is registered as a trademark.
There are many reasons why your brand may not be capable of registration as a trademark. The point is to consider as early as possible whether your brand is capable of registration, and if so, to register it. Even if, for whatever reason, your brand is not capable of registration, by examining the prospect of registration you will better understand the limits of your brand protection and will likely be in as protected a position as possible if and when conflicts do arise.
5. Maintain Brand Protection Files
Every brand owner should maintain a brand protection file for each and every brand it uses or proposes to use. The brand protection file is often an extension of a winery's permitting file. However, it is preferable to keep brand protection materials together even if kept with a winery's existing permit files.
The purpose of the brand protection file is to maintain a quickly accessible record of brand usage, scope and quantity sold. Records to keep in your brand protection file include:
- COLAs
- Basic Permit (listing trade names)
- Fictitious business name statements
- Invoices (compiled/summarized if many)
- Sample label specimens (at least five of every vintage/design)
- Copies of trademark registrations, applications, etc., and
- Any other materials (such as marketing materials, cellar notes, etc.) that make use of the brand, describe the brand, or that evidence sales information for the brand.
Maintenance of brand protection files will all but eliminate time consuming searches for information and paperwork if a conflict ever arises concerning the brand. This is especially true if, for whatever reason, your brand is not registered as a trademark. The existence or non-existence of the above materials can often determine whether you will avoid an expensive dispute or potentially lose your brand.
At a minimum, maintaining brand protection files for all your wine brands will keep your legal costs down and keep you focused on your wine business, rather than trying to locate or construct long lost records in the face of a brewing brand conflict.
6. Logos and Other Designs As Brands
First and foremost, all brands should be protected, if possible, as registered trademarks. A trademark by definition is anything that identifies the source of a product or service. Brands are principally source identifiers and as such should principally be protected as trademarks.
However, if your brand incorporates a logo or other design, you should also consider copyright registration for the logo or design.
Any original creative expression can be protected and registered as a copyright. Logos and other designs are considered creative, so if they are original expression, that is, not copied from somewhere else, they enjoy copyright protection and can be registered as copyrights.
Copyright protection provides the owner the sole and exclusive right to use the design protected by the copyright for any commercial purpose, subject to fair use by third parties, which generally means non-commercial use. Copyright registration, like trademark registration, does not produce the rights, but greatly enhances them. For instance, you cannot sue to enforce a copyright until you have registered the copyright at issue with the Library of Congress.
Copyright issues are especially important to consider if you commissioned an artist or designer to design your label, or if your label incorporates someone's existing artwork.
If you hire someone to design a label for you, or to produce a logo or design to be used on a label or packaging, you should make sure to obtain an assignment of rights to the design in exchange for the payment.
If such person is an employee of your company, then the company is presumed to own the fruits of the employee's labor and the assignment is not technically necessary. However if you hire a consultant or other non-employee independent contractor to do the work, you need to have the independent contractor execute a written assignment specifically transferring to the company all rights to the work product. If you do not obtain a written assignment of rights from the contractor you hired to develop the design for you, that contractor may retain the underlying rights to the work product and you risk not being able to use that design in the future (e.g., on future vintages, different labels, etc.).
If you use plan to use someone's existing artwork as part of your label design, or otherwise in your marketing materials or merchandise, you probably cannot expect the artist to assign all rights to the artwork to you, but you should make sure to obtain written permission (a license) from the artist (or whoever owns rights to the artwork) to use the artwork for whatever purposes you envision (such as multiple vintages, posters or otherwise).
7. Think about Future Plans for Brand
Whenever you are in the process of selecting a new wine brand, you should factor any possible future use of the brand into the selection equation. For example, if your plans include exporting the wine brand to a foreign market, you should think about clearing and protecting the brand in those export markets, in addition to seeking protection in the United States.
Trademark rights are specific to each country, so your right to a trademark in the United States does not automatically provide you any rights to that mark in a different country. For a nominal fee, you or your attorney can order a screening search of any country to see if your brand is already protected or being used in that country. Your attorney can also advise you whether seeking registration in such foreign countries is advisable.
Conclusion
Conflicts over brands can be expensive, time consuming and distracting. They can also be minimized or even avoided much of the time by making use of the self-help practices discussed above.
David E. Stoll is an attorney at Farella Braun + Martel and is active in the firm's Wine Industry practice, where he represents wineries and vineyard owners. Mr. Stoll works with wine clients in connection with grape contracts, mergers and acquisitions, consulting arrangements as well as providing advice regarding the use and protection of wine-related trademarks and tradenames; including the names of wineries, their wine brands, and the increasingly common use of proprietary and vineyard designated names.
Mr. Stoll can be contacted at dstoll@fbm.com.
This article is published as a service to our clients and friends. It should be viewed only as an overview of the law, and not as a substitute for legal consultation.