I do believe this Olde Bay Saison label raises at least a few legal issues. First of all, I sure hope the brewer had permission to use this famous branding. McCormick owns the Old Bay seasoning brand and probably would not have a sense of humor about any unauthorized uses. Even if the beer is loaded up with the same seasoning, and even if the reference tends to be flattering. I can not imagine that changing one letter (from Old to Olde) is likely to help any more. The total production for this ale with spices seems to have been tiny, so that may help somewhat more to avoid problems.

A second legal issue is that, such a beer needs formula approval, before label approval and production. To get formula approval, it is usually necessary to provide a detailed ingredient list to TTB. It can be very difficult for anyone to get ingredient details (beyond what FDA typically requires on a food label’s ingredient list) about famous and protected products like Coca-Cola, Angostura Bitters, or Old Bay. TTB typically needs to check for artificial flavors, allergens, colors, and use-rate limitations, and this can be very difficult to do without a complete ingredient list of the sort that McCormick would be unlikely to provide to the brewer here (The D.O.G. Beverage Co. of Westminster, Maryland). So this raises the question of whether this beer actually contains Old Bay seasoning, or TTB did not require details about all 18 ingredients, or D.O.G. somehow got hold of the ingredient list.

Related Posts:

• Intoxicating Candy: Bubble Gum (2)
• Happy Ten Ten (0)
• Wine Without Sulfites (9)

If you’re reaching for a beer, you’ll probably not accidentally grab that bottle of vodka, will you? Looking to pair that great salmon dish with a nice chardonnay usually won’t mean that you accidentally grab a six pack at the convenience store, right? Yes, even though you know that there’s a big difference between beer, wine and spirits (how they are made, sold and who drinks them, for example), you may be surprised to find out that not everyone does. The U.S. Patent & Trademark Office, for example, does not know the difference and continues to demonstrate this with new legal cases decided through its judicial branch, the Trademark Trial and Appeal Board (TTAB).

Who cares? You will if you are trying to register your beer, wine or spirits trademark. Unless you want to waste your money on an application that the PTO will reject, it is increasingly important to do a thorough trademark search first for any confusingly similar marks. That search should cover not only products the same or similar to your product (e.g., beer), but also all other alcohol products (e.g., wine and spirits too) regardless of how distant you think they are from your product. A recent trademark legal case drives this point home once again.

Remember, the PTO will refuse your trademark if it is likely to cause confusion with a confusingly similar mark that was registered or applied for before you applied for your mark. In the case Miguel Torres, S.A. v. Complejo Industrial RM, S.A. de C.V., Opposition No. 91188401 (May 17, 2011), an applicant for the mark GRAN SOL & Design for tequila was opposed by the owner of the registered mark GRAN VINÃ SOL for wines. The wine mark owner thought it would be damaged if the tequila mark was registered.

After finding that the marks were sufficiently similar to cause confusion if they were used on similar goods, the TTAB looked at the similarity of the goods. The TTAB bought the arguments that wine is similar to tequila because 1) they both travel in the same channels of trade (bars, restaurants, liquor stores, and online); 2) the purchasers are ordinary consumers; 3) one product may be substituted for another in drinks; 4) both are inexpensive and purchased on impulse; and 5) consumers either don’t see or don’t note the distinguishing name and address of the bottler, packer, or importer that appear on the label.

Commenting on the same case, The TTABlog observes:  “Applicant submitted substantial evidence regarding the strict regulations governing alcoholic beverages in the United States. … The Board was not impressed.” The blog concludes that “The Board’s opinion, with numerous case citations, makes it clear why it is futile to argue that one alcoholic beverage is not related to another for Section 2(d) purposes.”

Never mind all the counter arguments that you can make about your discerning consumers, your distinguishable price points, and your different sales methods. Nope, this is only the most recent of TTAB and court cases that show that the law has a blurry view or is blind to important distinctions in the beverage industry. If you are thinking of a snappy new trademark, you stand warned – do your homework first, or better yet, have an experienced trademark attorney help you understand the risks.

Paul Jorgensen keeps a close watch on trademark issues affecting beer, wine and spirits. He is affiliated with this firm as Of Counsel and can help with a wide range of trademark and contract issues.

Related Posts:

• To Flame or Not: Czech Absinthe Hits the US (7)
• The Original Mountain Dew (1)
• Red Bull Vodka and Beer (5)

It’s not every day that you see COLA news on the front page of the newspaper, but it does happen from time to time. On Saturday, The Wall Street Journal featured COLA news on the front page. The story explained that no less than three companies have been trying to use Buffalo Bill as part of their branding — with two of them fighting it out in court. “The two entrepreneurs are fighting in court for the exclusive right to sell beer that trades on the musky aura of adventure surrounding Army-scout-turned-bison-hunter-turned-sharpshooting-showman William F. Cody.”

Eric Bischoff got his first COLA in March of 2011 (and the second one is here). He is a “former professional wrestling icon.”

While Bischoff already has the COLAs and applied for the trademark, it looks like Mike Darby has been selling beer under the Buffalo Bill name since before Bischoff. But “Mr. Darby failed to get federal approval of his label, as required by the law. (Mr. Darby says he thought the brewer and distributor had taken care of that.)” Darby owns a hotel in Cody, Wyoming “built by Buffalo Bill in 1902.” Darby “had to pull his beer from the market” while awaiting label approval.

The third company is affiliated with Bill Owens, but is not interested in fighting over the brand name. The brewery does not even seem to claim trademark on the brand name. The story says Owens has moved on from making beer and now runs a trade group for craft distillers (“It’s much more fun to be involved with people making whiskey, vodka and absinthe, he says.”) This may allow him to avoid a roundhouse kick, a six-shooter, and the swirling lawsuits.

Related Posts:

• Tiger Blood (3)
• The Original Mountain Dew (1)
• Seagram (0)

I would have thought John Robert McCulloch would get his keester sued off. But maybe he’s right and it’s the soda people who grabbed his brand and ran with it. The approval mentions that “Mountain Dew is the brand John McCulloch sold vodka under from 1885 until put out of business by Prohibition.” I’d wager that’s earlier than Pepsi or any of its forebearers put the lithiated green soda into commerce.

As it turns out, Wikipedia confirms that:  “The original formula (for the soda) was invented in the 1940s by two Tennessee beverage bottlers, Barney and Ally Hartman, and was first marketed in Marion, VA, Knoxville and Johnson City, Tennessee. … The Mountain Dew brand and production rights were acquired by PepsiCo in 1964, at which point its distribution expanded more widely across the United States.” The Hartmans got the name from “a colloquial term for moonshine whiskey” and got the trademark rights soon after.

The McCulloch website makes it quite clear that Mountain Dew was widely used on spirits well before the soda came along. The site also has a lot of old-fashioned spirits advertising, along with the quaint and none too subtle tagline “The Whiskey Without a Headache.”

Related Posts:

• COLAs on the Front Page (0)
• When Does Wine = Spirits? (0)
• TTB Products from Majority Muslim Countries (0)

I got to talking with Dan Matauch the other day. He is a leading package designer in Michigan, at Flowdesign. I would have been impressed enough that he handled the design for Honest Tea. But he also handled Peet’s Tea, and Xango (aka Tiger Blood), and most of the designs really appeal to me. The list goes on and on, with Catdaddy Carolina Moonshine, Blue Ice Vodka, and the not-to-be-ignored Bawls and Stubb’s.

I was fairly surprised to see that Dan worked on the package design for Pama Pomegranate Liqueur — and it had some kind of patent. The March 2010 press release says:

To differentiate its product, PAMA Spirits turned to the expertise of Flowdesign to develop a custom bottle that was both unique and could be patented. … Flowdesign is a unique branding firm where experience is infused in both brand graphics and structural design. Founded in 1997, Flowdesign has led the brand design field in custom structural design with 10 prestigious GPI (Glass Packaging Awards).

It surprised me because the conventional wisdom seems to be that it’s normal to get a trademark related to alcohol beverages — but it’s not realistic to get a patent. The conventional wisdom may be too simple. We have covered several alcohol beverage-related patents in the past, such as Malt Liquor, Cubes, and Fruity Caps. To understand this better, I talked with Paul Hletko. Paul is perfect to dissect this because he happens to be a patent lawyer — and runs Few Spirits (of Evanston, Illinois). Paul explained as follows:

The beverage alcohol business is exceptionally competitive.  Innovative companies are always trying to distinguish themselves to stand out from the competition, while others try to engage in “sincere flattery.”  Brands can go a long way by distinguishing themselves with distinctive and unique propositions, but this can attract copying.  After investing the time and money for uniqueness, it is rare that a brand welcomes a copycat.  Protecting against these problems can be expensive short term, but prove highly valuable long term. One of the first strategies to protect innovation is the use of trademarks.  However, trademarks are “usage” based and thus have certain advantages and disadvantages.  In particular, it can be difficult to gain traction with a new trademark. This short post is not intended to address trademarks – another topic for another day.

Another potential strategy is to seek patent protection for unique and nonfunctional designs.  In the beverage alcohol industry, this typically means unique bottle designs. For example, the PAMA brand secured design patent protection for a new bottle. D598,777 S claims this unique bottle shape, and gives its owner the exclusive right to make, use, or sell bottles with that design for the life of the patent.  Other designs could also qualify for design patents, such as a unique bar top (Blanton’s) or the like. A design patent covers the design of an object, so long as the design is not mandated by the function.  Additionally, the design must be novel as well as not obvious to one of ordinary skill in the art.  Unlike trademarks, however, design patents have a limited life span, and the patentee may be faced with questions about what to do after the patent expires.  But, so long at the design patent remains in force, the owner of the design patent has the exclusive right to make, use, or sell the design.

Unlike trademarks, design patents are based on registration, and prior to registration, the design patent application must be examined to ensure that the design is indeed novel, useful, and nonobvious.  Unfortunately, this can cost money, but the advantage of the exclusive right to make, use, or sell may justify the investment.  If your product is getting a new bottle or other design flourish, you should consider trying to protect the investment. By no means does this brief note apply to all situations, and it is not legal advice, but it should help you talk with your attorney – consult your attorney for guidance on how best to capitalize on your unique situation.

Thus, if one of your brand’s differentiating characteristics is a new bottle design or other similar packaging, consider and evaluate whether a design patent would be appropriate. Paul explained that the cost will likely be significantly lower than the investment in the new design itself (molds, designers, etc.) and the investment may prove highly valuable when the “flattery” starts.

Related Posts:

• Wine Without Pretense (0)
• What’s Your Poizin? (1)
• Water 2 Wine (4)

The Buck Bunny didn’t get very far. It stopped not far from this 2006 approval. Maybe the antlers, or the spirits, or Jägermeister got in the way.

A contributor in California was concerned about the spirits added to this product, and the overall appearance. He said:

It seems legally interesting because it seems to contradict the TTB labeling code about wines containing distilled spirits and being similar to distilled spirits. Maybe those rules don’t apply to flavored wines. Also, it reminds me of a Jackelope.

Quite possibly, it also reminded Peach Street Distillers of a Jackelope. Peach Street rolled out their Jackelope Gin about a year later.

The spirits are probably a minor problem, compared to the other issues noted above. It is common to add spirits to wine. It is less common to mention them, but it is usually required, when those spirits are not derived from the same fruit as the base wine. Here it is grape wine with citrus spirits. If it were grape wine with grape brandy, the spirits would be less likely to show on the label.

Related Posts:

• Igniting a Controversy (0)
• Gallo Beware? (4)
• Duff Beer Alert (10)

It’s a wonder that Red Bull (of Austria) has not yet come out with with an alcohol beverage. It would be likely to be a smash, in that the product is so very popular as a mixer.

Perhaps things are going so well with the energy drink that there is no need to mess with it. But more likely, these two products beat the Austrians to the punch. Miller Brewing Company has approvals for Red Bull Malt Liquor going back at least as far as the early 1980s. Likewise, Majestic Distilling has approvals for Red Bull Vodka going back to 1990 or so.

This Dog Style Vodka is one of the few TTB products to make explicit reference to the famous energy drink.

Related Posts:

• Hello Kitty Wine (7)
• To Flame or Not: Czech Absinthe Hits the US (7)
• Stolichnaya (0)

I am pleased to share a guest post, from Paul Jorgensen. Paul is an attorney in Washington, D.C. who frequently works with trademarks in the spirits and wine industries. His firm, The Jorgensen Law Firm PLLC, helps clients with trademark, copyright, domain name, contract, e-commerce and online privacy and security matters.

For readers thinking of registering a surname as a trademark for their beverage, please consider a recent case by the judicial branch of the U.S. Patent and Trademark Office (PTO), the Trademark Trial and Appeal Board (TTAB). According to In re Hall Wines, Serial No. 78926151 (February 10, 2009), anything that looks like a surname in your mark must be, above all, unique.

The PTO usually refuses marks that are surnames, reasoning that if the PTO grants registration to that name, others may be unfairly stopped from using their name on their business, products or services. Since distillers and wineries often think of branding their products with family names, famous names, or names of well-known craftsmen, the resulting marks are frequently refused.

So distillers and wineries should have a clear understanding of how the PTO will review their proposed mark. If the PTO thinks your application contains a surname, they will put the proposed mark through four tests, often referred to as Benthin factors after a case with the same name (In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995)):

1. How rare is the surname? The PTO will research this or accept evidence from you that shows how many people have this surname. You should be realistic about rarity: the PTO swiftly pulls information from computer databases. If data reveals that only a few people have the surname in the Mark, the PTO reasons that fewer people will be affected by the registration of the surname as a trademark. Greater rareness, then, increases the chances that the PTO will register your mark.
2. Does anyone connected with the applicant have this name? If you do not volunteer the information, the PTO will ask you this question if they think the pending mark looks like a surname. If you answer no and provide evidence that the apparent surname is simply made up or that it refers to something else (e.g., a historic building), the PTO will be less likely to refuse your mark because it is primarily a surname.
3. Does the word have any other meaning than a surname? You should be ready to explain and provide supporting evidence that the apparent surname in your application has a meaning other than as a surname. For the PTO to accept this, the meaning has to be a “recognized” meaning, indicating that the word would be known by many consumers, not just a small niche of them, as having a non-surname meaning.
4. Does the mark have the “look and sound” of a surname? As this question is more subjective than the others, an applicant with all other factors going in their favor may be wise to prepare a good argument that your mark does not look or sound like a surname. Arguing that the mark as a whole or in part is reminiscent or evocative of something else (a city, a car, an animal, etc.), and supporting that with evidence, will help win this factor.

The PTO (or if you have appealed the PTO’s refusal, the TTAB) will balance these four factors to decide whether the mark should register. Gallo, as you might imagine, seems to be safe from this kind of rejection, likely because the winery registered GALLO marks many years ago and built up fame in those marks. Today, however, other vintners who assume they can get a trademark registration in their name may be in for a surprising rejection.

Related Posts:

• What’s Your Poizin? (1)
• Ugly American Beer (2)
• TTB Not OK with Vitamin Wine (3)

A lot of labels on this blog speak to men. This one speaks loudly to women. Above are two of four Hello Kitty table wines imported from Italy by USA Wine Imports of New York, NY.

Wiki says Hello Kitty is:

one of many simply drawn fictional characters produced by the Japanese company Sanrio. Designed by Ikuko Shimizu, the first product, a vinyl coin purse, was introduced in Japan in 1974, and in the United States in 1976. … The Hello Kitty line has since developed licensing arrangements worth more than $1 billion a year in sales. Examples of products depicting the character include dolls, stickers and greeting cards to clothes, accessories, school supplies, dishes and home appliances.

This might be good for Valentine’s Day. Sanrio has licensed an awful lot of Hello Kitty products, and who would not enjoy a Saturday afternoon flaunting their Hello Kitty Lawnmower?

Related Posts:

• Red Bull Vodka and Beer (5)
• To Flame or Not: Czech Absinthe Hits the US (7)
• Stolichnaya (0)

During the past 20 months TTB has approved several dozen absinthe brands. Almost all are produced in Switzerland, France, and the US — points west of the Czech Republic. Above shows two of the earliest-approved products made in the Czech Republic, approved a few days ago. This is significant due to a long rivalry between Czech and non-Czech absinthes. The Czech products are somewhat different, and these Stromu products show it well:  they have added flavors rather than herbs added before the final distillation; the proof is somewhat higher; Djabel suggests lighting the product on fire (back label). The latter is frowned upon by most other producers, to put it mildly. We would also expect many absinthe brands to fight over the trademark rights to the Green Fairy name; this term has long been applied to numerous absinthes all over the world. Here is a list of the first 20 or so absinthe products approved for US sale.

This also shows the massive leadtime sometimes required to bring an alcohol beverage product to market in the US. For Djabel: the importer got formula approval on July 11, 2008 (see item 11 on Djabel COLA); the importer probably applied for formula approval 1-2 months earlier, in May or June of 2008; TTB rejected a label submitted on August 8, 2008 (see item 18.d.); the importer resubmitted the label on September 3, 2008 (see item 20); and TTB finally approved the label on October 23, 2008 (see item 23). This is 5-6 months of hard work with many opportunities for missteps.

Finally, this well demonstrates the recurring trend, to portray alcohol beverages and especially asbinthe as sinful. Djabel’s back label says:

Djabel means “devil” in Czech. … During the dark-ages Bohemian “witches” and pagan worshipers used potions distilled from local herbs including wormwood (artemisa absinthium) as healing tonics and for social rituals. … please serve responsibly the traditional way by flambeing sugar in a spoon …

Related Posts:

• What’s Your Poizin? (1)
• Too Remote Brewery (0)
• Sin City Libations (0)