Winery and Vineyard Trademarks: How to Create and Protect Brand Names
Published in the July/August 2013 issue of Vineyard & Winery Management.
Why are trademark rights important for wineries and vineyards? Consider two scenarios. In the first, you’ve spent eleven months building your brand’s name, only to receive a cease-and-desist letter stating that a winery in another state has been using that name for years, has a federally registered trademark, and will sue you unless you change your name. Your investment in your labels, website, and social-media advertising for that name – and most importantly the hard-earned goodwill – likely would be lost.
In the second scenario, another winery uses the same name to label their mediocre chardonnay as you use for your critically acclaimed chardonnay. You don’t want consumers mistakenly believing that the two wines are the same or that your winery is making the sub-par chardonnay. Whether you can stop the other winery’s use of your mark depends on a number of factors, including both the mark’s strength and who was using the mark first.
As these scenarios illustrate, the two principal reasons for investing in creating and protecting strong trademarks are: (1) to ensure that no one can stop you from using your mark; and (2) to prevent others from using your mark. So let’s open the proverbial bottle of trademark rights and give you a taste of trademark basics.
What is a Trademark?
According to the U.S. Patent and Trademark Office (USPTO), which registers trademarks, “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.” Put simply, a wine trademark is anything that identifies who makes the wine – the winery name, the label design, and any name given to the particular wine are all potentially trademarks.
Creating a Strong Trademark
When choosing a name, slogan, or logo for your winery, vineyard, or label, try to select a strong trademark that you can prevent competitors from using. A mark’s strength depends on where it falls on the distinctiveness continuum – the more distinctive the trademark, the stronger and more protectable it is. The strongest marks are “fanciful” or “arbitrary.” Fanciful marks are made-up words like “Xerox,” and arbitrary marks are words that would not ordinarily be associated with a product, such as “Apple” for computers.
Lower on the continuum are “suggestive” marks that indirectly convey a product characteristic, such as “Coppertone” for sunscreen. Farther down are “descriptive” marks like “Delicious,” which can only be protectable trademarks if they acquire distinctiveness over time. At the bottom of the continuum are “generic” terms like “Red Wine,” which can never be protected as trademarks.
Once you have a few desired names, you should determine if they are already being used. If someone is using your desired name, they likely have trademark rights – even if their mark is not federally registered – and they could sue you for trademark infringement for using their mark (or a confusingly similar mark) on the same or similar products. (Many are surprised to learn that federal registration is not required to obtain trademark rights, but you can obtain common law trademark rights simply by selling products displaying the mark.) You can use a name that others are using on different products or services, so long as consumers won’t be confused into believing that the same source is providing your wine and their products or services.
To reduce attorney’s fees, you can conduct initial searches for your desired marks on (1) the USPTO’s database of registered trademarks (www.uspto.gov/trademarks); (2) the Alcohol and Tobacco Tax and Trade Bureau’s COLA (Certification/Exemption of Label/Bottle Approval) database (www.ttbonline.gov/colasonline/publicSearchColasBasic.do); and (3) an Internet search engine, like Google. If your initial searches reveal no conflicting users, the recommended next step is to ask your attorney to obtain and analyze a comprehensive search report from a trademark search firm, which includes searches for look-alike or sound-alike names and for unregistered, common-law marks.
Assuming your desired name has no trademark conflicts, you must next decide whether to seek federal registration of your mark. Discuss the reasons for pursuing federal registration versus common law rights with your attorney, but one important benefit of federal registration is that it gives you the exclusive right to use the mark nationwide, even if you are currently using the mark in only a discrete geographic area. An exception to this nationwide right is that anyone using the mark before you has “priority,” and you cannot stop them from using the mark in the geographic region in which they were already using the mark when you obtained registration.
Sometimes a winery uses a brand name for several years without registering or policing it. While the temptation is to maintain the status quo, we strongly recommend that you discuss with your attorney whether you should seek to register such a mark. You don’t want to learn of a competing use of your name by another winery years after it starts. We have had clients approach us after a potential buyer of a winery has discovered a competing use through due diligence and raised that use as a bargaining chip during the sale negotiations.
For the winery to resolve those trademark issues under the pressure of a potential sale transaction is often difficult and costly. No deadline exists for applying for federal registration, but the longer you wait to apply, the greater the risk that others might object. Part of the registration process is that, before registering a mark, the USPTO publishes it in the Official Gazette, and anyone who cares to may file an opposition to the application. In our experience, the sooner you learn of and deal with any potential opposers, the better.
Defending Your Trademarks
Once you have a trademark, you need to protect it. Protecting your trademark requires that you monitor the market for potential infringers and confront anyone using a mark that is likely to confuse consumers. If you discover someone using your mark (or a confusingly similar mark), you must evaluate whether to try to stop it. The strength of your trademark, the likelihood of winning your case (by proving likelihood of consumer confusion), and your litigation resources will all factor into this decision.
It’s probably not worthwhile to pursue someone using your winery’s name on unrelated products or services, like bicycles or dry-cleaning. But you would likely want to stop someone using your name on wine or wine-related products or services, such as wine openers or bottling services. Unlike wine, which often gets better with age, trademark infringement gets worse the longer it sits. If you do nothing in response to another’s use of your mark (or a confusingly similar mark) on the same or similar goods, you risk diluting your mark’s distinctiveness, losing your right to exclusive use of that mark, and reducing your brand’s value. And if you do not stop infringement quickly, the infringer will have spent time and money investing in the name, which usually means that the infringer is less willing to give up the name without a fight.
If you learn of someone using your mark, immediately contact your attorney to discuss how to approach resolving that problem. There are a number of different approaches, each with its own pros and cons. Your attorney may recommend that you contact the infringer directly to see if a business resolution can be reached before lawyers get involved. A more aggressive approach is for your lawyer to send a cease-and-desist letter. Such letters can vary substantially in content and tone, depending on your goals and stomach for litigation, from aggressively stating that you will bring suit if the infringement does not stop immediately, to politely informing the other user of your rights and your desire to discuss a potential compromise.
If you and the infringer are located in different states, your attorney may recommend filing an infringement lawsuit before sending a cease-and-desist letter to prevent the infringer from being able to seize “home court advantage” by filing suit against you in response to your cease-and-desist letter. In other situations, it’s better to pursue a “trademark coexistence agreement” that allows both parties to use their marks in agreed-upon ways that avoid consumer confusion. An experienced trademark attorney can explain your enforcement options, advise you on which option is best for you, and provide guidance through the process.
A Closing Thought
We have only skimmed the surface of the substantial body of federal and state law governing trademarks. While smaller businesses may understandably be tempted to “do it yourself” to avoid attorney’s fees, using a trademark lawyer can often save money in the long-run. Creating and defending trademarks is not easy or inexpensive, but given how important your brand name is to your business, we firmly believe that the investment in establishing and enforcing your trademark rights is well worth it.
Robert C. Holtzapple and Racheal Turner are business litigation partners in the San Francisco office of Farella Braun + Martel LLP, and both frequently assist wine industry clients with trademark matters, including creating and enforcing trademarks. [email protected]; [email protected]; www.fbm.com.