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Johnny Love Vodka Wins “Sexy Lips” Trademark Appeal Against Jim Beam

Johnny Love Beverage Company LLC (“JL”) and Jim Beam Brands Co. (“Beam”) are fighting over the right to use “sexy lips” imagery on flavored vodkas. JL’s logo (the subject of U.S. trademark registration no. 4,044,182; shown below left) dates back to 2005, and is described by Johnny Love’s creator and namesake Johnny Metheny as “definitely sexy.” Metheny apparently felt the same way about Beam’s new logo, adopted in 2011, (shown below right), and sued Beam in federal district court for trademark infringement, false designation of origin, and unfair competition.

jllips After filing suit, JL promptly moved for preliminary injunctive relief, essentially requesting that the court order Beam to stop selling products with Beam’s new logo during the pendency of the trial. Beam cross moved for summary judgment. The district court denied JL’s motion, and, in a surprise move, sustained Beam’s motion, dismissing the case and holding, “For reasons articulated in the Order denying the Preliminary Injunction, the Court determines that no issues of material fact remain which could provide Plaintiff a basis for success on any of its claims.”

beamlipsJL appealed the district court’s decision to the 9th Circuit Court of Appeals and, on July 14, 2016, the 9th circuit court issued its ruling, reversing the district court. The circuit court held that the district court improperly applied the preliminary injunction standard to Beam’s motion for summary judgment. The circuit court pointed out that “both [logos] have puckered, human lips as the focal point of their design; the lips have a similar angle and shape; and the lips are color-coordinated with the flavor of the vodka.” Accordingly, the circuit court found that a reasonable fact-finder could determine that Beam’s logo was confusingly similar to JL’s logo and that summary judgment was, therefore, inappropriate.

Most observers know that a lot of the good words are taken, when it comes to that delicious intersection of beverages, brands and trademarks. This case is a useful reminder that a lot of the good images (some but not all sexy lips!) are taken, as well. It is also a prime example of a little guy scoring big points on a behemoth. Judge Wallace mentioned:  “Jim Beam instructed its legal counsel to perform a clearance search for lips designs. The legal department found 40 references to lips for alcohol-related products.”

Note: With JL having now ultimately survived Beam’s motion for summary judgment, experience tells us that it would not be surprising to see the case quietly settle in the near future, with Beam moving to a design less similar to JL’s (not less sexy, just different sexy).

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alcohol beverages generally


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Trademarks All Over the Atlas

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A few months ago, big law firm Foley Hoag compiled a marvelous list of trademark scuffles, within the alcohol beverage category, during the past year. We already knew there were scores of tussles, and the list was growing ever longer, but we never quite realized how fast the casualties are stacking up. The article shows at least 50 such disputes.

Of all those, the Atlas dispute is the one that caught my eye. Because it’s local, must be crushing news for whoever lost, recent, and I had not heard about it but for the Foley article. Foley explained:

The Atlas Brewing Company of Chicago opposed Atlas Brew Works’ application to register ATLAS for beer. The Opposer alleged that “Atlas” was primarily descriptive of a geographic area within Washington D.C., which is where the Applicant is located (“Atlas” is apparently an unofficial nickname of the H Street District). The TTAB rejected this argument, finding that consumers were unlikely to make the connection. The TTAB agreed with the Opposer that there was a likelihood of confusion between the marks, but it found that the Applicant was the senior user (the TTAB did not accept the launch dates of the Opposer’s Twitter and Facebook accounts as establishing priority). The petition was dismissed. Atlas Brewing Company, LLC v. Atlas Brew Works LLC.

Upon reading the opinion, my main takeaway is that the Washington, D.C. brewer tried earnestly and in good faith to find a good brand name, but still had to contend with this expensive dispute. First, they tried VOLSTEAD but House Spirits Distillery shut that down. The Atlas tale and the Foley article further underscore the need to do no less than look around, Google it, conduct a thorough trademark search, engage a specialized lawyer, check TESS, check TTB’s Public COLA Registry, and check LabelVision, when selecting a brand name in a crowded sector. There is not much sign that either party did a particularly good job of scoping out the things that ought to be scoped out, before putting so much sweat and money into a brand, especially since it is getting so clear that disputes are common. In any event, because the Chicago brewer’s opposition was dismissed by the TTAB, it looks like the Washington brewer can shrug this off and move forward with ATLAS as their brand name.

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alcohol beverages generally, malt beverage


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Bourbon-Barrel-Aged Wine

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At USBevX a few days ago I heard lots of questions about various wines aged in Bourbon barrels. But I did not hear lots of answers so I thought I would take a look and see what’s going on. This Fetzer example, above, seems like a good place to start.

It tends to show that it is okay to mention Bourbon on a vintage- and varietal-designated wine. I am a little surprised I don’t see any reference to a formula approval, or to the amount of aging in said barrel. This Fetzer label is also noteworthy because it quickly drew the ire of the big Buffalo, as in Buffalo Trace; Sazerac charged at Fetzer for attempting to graze on land staked out long ago by the whiskey company. This really good article discusses the trademark dispute, about 1/3 of the way down the page.

I see about 64 wine labels with reference to Bourbon as approved by TTB during the past five years. Another representative one, from another big company, is this Robert Mondavi approval. I don’t really see any comparable labels, in the prior five year period. From these two examples, and a bit of asking around, it sounds like the reference to Bourbon should not appear on the same line as the wine’s class/type statement. Also, you are more likely to need aging details (e.g., Aged 6 Months) on the label if the age reference appears on the “brand label.”

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whisky, wine


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Don’t Be Fooled by Trademark Spam!

About five to ten times per year, we get a call from a client asking why the USPTO sent them an invoice for hundreds of dollars for their trademark applications. After a few minutes, it becomes clear what they are talking about—trademark spam.

Trademark spam? Trademark spam is an unavoidable and unfortunate result of the information an applicant provides the USPTO in an application, which is publically available. This includes, among other information, the name, address, and email of the party applying for the mark. As a result, spammers have all of the information they need to send fake trademark solicitations that appear to be legitimate. The USPTO is fully aware of trademark spam, but despite its efforts, applicants and registrants continue to be victimized by spammers.

What does trademark spam look like? Trademark spam generally comes in the form of official-looking correspondence—letters or email—that either “requires” the recipient to pay certain fees, or strongly “recommends” that the recipient use a particular company to facilitate the trademark registration process. In the first instance, some fees are completely fabricated, while other fees purport to be real fees, but are grossly inflated by the spammer. Here is a list of the actual USPTO trademark fees and their correct amounts. In the second instance, spammers offer their services to facilitate the registration process, something only licensed attorneys are allowed to do. To give you a better idea of what trademark spam looks like, here are a couple examples of trademark spam, one from the “U.S. Trademark Compliance Office” and another from the “Patent & Trademark Office.” While these may appear to be official USPTO documents, both are actually spam.

How can I distinguish trademark spam from legitimate, USPTO correspondence? Here is a quick, easy, and effective way, recommended by the USPTO, to tell trademark spam from legitimate correspondence: If the correspondence is from (1) the “United States Patent and Trademark Office” in Alexandria, VA; or (2) If by e-mail, specifically from the domain “@uspto.gov,” then it is official, USPTO correspondence. Also, if you hired an attorney to file your application, all legitimate mail should go to them. Remember, if you ever have any doubt as to the legitimacy of any correspondence you receive regarding your trademark application or registration, you should check with the USPTO, or an experienced trademark attorney.

What should I do if I get spammed? If you receive any communications that you believe may be spam, or believe you have been misled by trademark spam in the past, the USPTO encourages you to email a copy of the correspondence and the envelope it came in to tmfeedback@uspto.gov, so that it may assess whether to add the sender to the trademark spam list. While the USPTO will not reimburse you for any money you paid to a spammer, notifying the USPTO may help prevent others from being misled in the future.

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alcohol beverages generally


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Two Craft Beer Lawyers

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I am pleased to report that Dan Christopherson is featured in the current issue of Landslide. This is the magazine of the American Bar Association’s Intellectual Property Section. The article is entitled “Trademarks in the Golden Age of Craft Beer.” Dan is a hardcore craft beer lawyer at Lehrman Beverage Law, and he has more than eight years of highly relevant trademark experience. He wrote the article with Michael Kanach, Senior Counsel and craft beer lawyer at Gordon & Rees in San Francisco. Here is an excerpt from the article:

Even the most devout craft beer fan may not be aware of the volume of trademark disputes in craft beer today. The number of disputes is likely to increase with thousands of existing and planned breweries (not to mention other beverage producers) fighting for an increasingly small pool of quality names. While many of these “disputes” are quickly handled over a beer, opposition and cancellation proceedings and federal trademark lawsuits are becoming more common.

Below are six important lessons in branding for the craft beer industry, including the interactions between its competitors (or collaborators), the personalities of its customers, and the countless legal restrictions and requirements at the state and federal levels. Each of these elements is important to branding because each of these constraints on creativity can be costly if they are not taken into consideration.

The article goes deeper than the run of the mill platitudes about being careful, or calling a lawyer. For example, the article says you should not be overzealous in filing trademark applications:

Sometimes the best advice a trademark attorney can give a client is that it should not file a trademark application. Trying to lay claim to a name that is either (a) already being used by a competitor, or (b) a common beer term can, at best, make your client look bad in the public eye or, at worst, land your client on the wrong end of a trademark dispute. Craft … beer fans can be passionate, loyal, and outspoken about their allegiances, particularly when the defendant is a small, local brewery.

Filing a trademark application may provoke a competitor to take action against you. Innovation Brewing in Sylva, North Carolina, recently found itself involved in such a dispute after it filed a trademark application for the mark INNOVATION BREWING for “beer.” Unfortunately for [Innovation, Bell’s Brewery] owns two trademark registrations for INSPIRED BREWING, and claims common-law rights to the phrase BOTTLING INNOVATION SINCE 1985 in connection with beer. Bell’s might not have taken any action against Innovation Brewing, or even noticed it, if Innovation Brewing had not tried to register its name as a trademark. Now, instead of dedicating its undoubtedly limited startup funds to developing its new business, it is now entrenched in an expensive fight over its name.

For anyone involved with beer, wine, spirits or other food branding, it is well worth reading the entire article, continued here.

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malt beverage


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