Wines, Spirits & Trademarks

Branding is a critical consideration if you are in the Wine and Spirits Industry. The number of wineries in the U.S. and companies that function as importers, bringing wines and spirits to the U.S. continues to grow. A certificate of label approval from the TTB (Alcohol and Tobacco Tax & Trade Bureau) authorizes the certificate holder to bottle and remove or import alcohol beverages that bear labels identical to those shown on the certificate of label approval. However, receiving a TTB certificate of label approval (COLA) for an alcohol beverage product, does not mean the United States Trademark Office has approved or will approve your trademark. The TTB’s website states, “approval of a COLA neither automatically confers trademark protection, nor indicates that a particular mark may be used in violation of applicable intellectual property law”. An applicant seeking brand protection (federal trademark protection) for wines and/or spirits must go through the same steps as any trademark applicant at the USPTO. The Trademark Office is not interested in the COLA approval since its jurisdiction is the registrability of trademarks.

When adopting wine and spirit trademarks, a prospective trademark owner should try and avoid varietal names, common industry terms, descriptive terms, surnames, place names and geographic names. When clearing a mark for wines or spirits ensure you are searching the coordinated classes for international class 033. This means beer could be related to wine and spirits, along with retail shops selling alcoholic products, restaurants and bars, food products, non-alcoholic beverages and even cannabis and tobacco goods. The same general rules apply to trademark adoption in the wine and spirits’ industry as in other consumer product markets. The trademark owner should adopt a fanciful, arbitrary, or suggestive trademark. Not all trademarks are granted the same scope of protection under the law. The legal strength of a trademark is determined based on the spectrum of distinctiveness, see the firm’s web page entitled, The Importance of Selecting A Distinctive and Inventive Mark, for more on this topic. However, there are some special considerations for trademark applicants of wines and spirits.

Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), prohibits the registration of a designation that comprises a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used in connection with wines or spirits on or after January 1, 1996. A designation is considered a geographical indication under §2(a) of the Lanham Act, if it identifies the applicant’s wines or spirits as originating in a territory known for a given quality, reputation, or other characteristic associated with wines or spirits. This provision of §2(a) applies if the applicant’s identification of goods: (1) specifically includes wines or spirits; or (2) describes the goods using broad terms that could include wines or spirits (for example alcoholic beverages). This section is an absolute bar to registration on both the Principal and Supplemental Registers.

For an Examining Attorney to successfully present a prima facie case for refusal of a wine or spirit under Section 2(a) of the Trademark Act, the following would be required: (1) the primary significance of the relevant term or design is geographic, for example, a place name, abbreviation, nickname, or symbol; or an outline or map of a geographic area; (2) purchasers would be likely to believe that the goods originate in the geographic place identified in the mark, for example, purchasers would make a goods/place association; (3) the goods do not originate in the place identified in the trademark; (4) a purchaser's erroneous belief as to the geographic origin of the goods would materially impact the purchaser's decision to buy the goods; and (5) the mark was first used in commerce by the applicant on or after January 1, 1996.

On the other hand, if the wine or spirit originates in the identified geographic place named in the mark, and the primary significance of the mark is a generally known geographic location, it will be presumed by the Examining Attorney that there is a goods/place association. If this is the case, the Examining Attorney will refuse the mark under §2(e)(2) of the Trademark Act as geographically descriptive, or will require a disclaimer of the geographic term, depending on the mark in the application. One other alternative scenario provides that a geographic term can be used to certify the geographic origin of wines and spirits. See TMEP §§1210.09 and 1306.05 regarding geographic certification marks, (e.g., "Idaho" used to certify that potatoes are grown in Idaho). If you are looking to adopt a trademark for wines and spirits, please feel free to contact the firm for a courtesy consultation.