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1
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
2
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
3
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)
4
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
5
More Brands, More Disputes – Brewery Growth in US
Source: Brewers Association
6
Brewpubs Openings & Closings 2010-2016
Source: Brewers Association
7
Microbreweries Openings & Closings 2010-2016
Source: Brewers Association
8
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
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)
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)) ;
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)
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;
11
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.
12
Trademark Disputes
13
Trademark Disputes
14
Trademark Disputes (Bear Republic v. Central City Brewing)
15
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
16
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.
17
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)
18
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.
19
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
20
Trade Dress – Bottle shape
21
• 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
22
Trade Dress – Bottle shape
Diageo North America v. Sazerac Company Inc. 16-CV -09747 (Dec. 6, 2016 S.D.N.Y.)
23
Trade Dress – Bottle shape
24
Trade Dress – Bottle shape
25
• 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
26
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
27
Trademark – Label Dispute
• Captain Morgan (Diageo)
v. Admiral Nelson (Heaven
Hill) (Canada)
• Similar theme and look
• Protect label
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 Consent Agreements
29
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
30
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
31
• 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
32
• 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
33
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
34
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
35
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
36
Craft v. Crafty or Faux Craft
Shock Top Brewing
Blue Moon Brewing
Trouble Brewing
37
Craft v. Crafty or Faux Craft
AB InBev
MillerCoors
WalMart
38
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)
39
Still “Craft”? (Breweries acquired by AB InBev)
Graphic by Mystery Brewing
40
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
41
False Labeling Cases
• “Craft” cases: Blue Moon, Walmart
• Handmade cases: Tito’s Vodka
• Geographic Origin disputes:
Sapporo beer, Kona Brewing,
HAVANA CLUB
• Wine counterfeiting
42
HAVANA CLUB dispute
• Bacardi v. Cubaexport
(Pernod Ricard)
• Case first filed 2004
• Reg. No. 1031651 (1976)
(owned by Cubaexport),
recently renewed
43
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
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
Marijuana Marks
• Federal policy prohibits marijuana trademarks
(See In re Morgan Brown) (TTAB 2016)
• Alcohol beverage trademarks with references
to marijuana
• State laws
46
Questions?
Eugene M. Pak
@beerattorney
www.linkedin.com/in/eugenepak1
(510) 834-6600