Intellectual Property and Internet Practice - Wine Industry
In the United States, the Bureau of Alcohol, Tobacco & Firearms (ATF) regulates wine labeling. The ATF promulgates regulations for Appellations of Origin and American Viticultural Areas (AVAs). The regulations help consumers tell the difference between a Merlot produced in Napa Valley and a Merlot made with California grapes bottled in Indiana. The Wine Institute has created a website with helpful resources on Federal regulations for wine labels. Any winery preparing for commercial sale must comply with Federal and State labeling laws.
Wine labels are just as important as producing quality wine. For consumers, the label may be the hook that creates a purchase. Wineries should carefully consider obtaining a trademark for the winery name, brand and wine label.
Examples of well known wine trademarks include Gallo, Mondavi, Bolla and Penfolds.
An important asset for any winery is its name and trademark, as well as its particular design elements. Like other businesses, the wine industry is affected by problems involving trademark disputes and misuse. Wineries can protect their rights by registering their trademarks with the United States Patent and Trademark Office ("USPTO") or with state trademark agencies.
Trademark rights are automatically established under common law by adopting a trademark. Common law rights can involve the use of the ™ symbol to notify others of your trademark. To obtain the greatest amount of protection for your mark, you should consider filing an application with the USPTO for federal registration.
Federal registration gives the trademark owner presumptive national priority that precludes all others from using a confusingly similar mark (think "Coca-Cola," "Pepsi," "Gallo" for wines or "Budweiser" for beer).
Other advantages for federal registration include statutory damages, injunctive relief, access to federal court and the right to exclude infringing imports through recordation with the U.S. Customs Service.
Once a federal registration is issued, the owner is able to use the symbol ®, designating that the trademark is federally protected by the USPTO. Trademarks issued after November 16, 1989, are effective for ten years. An affidavit of use must be filed during the sixth year. Registrations can be renewed for ten-year periods as long as the proper fees are paid and forms are submitted.
Trademarks can also be registered internationally and at the state level within the United States.
Wine & Trademark Cases
Judge Reverses Decision in Leelanau Case Oct. 17, 2002
U.S. District Court Judge Gordon J. Quist reversed himself and now says that Leelanau Cellars Ltd. did not prove trademark infringement or product confusion by Chateau de Leelanau. Judge Quist stated that "After the bench trial which occurred on August 28th and 29th, I thoroughly reviewed the facts and law on this case. I now tend to believe the plaintiff has not demonstrated a likelihood of confusion between the two marks."
Judge Quist has scheduled an October 29th conference in the case. Read more in this article from the October 16 Traverse City Record-Eagle.
Court Orders Injunction Against Use of 'Leelanau' by Michigan Winery Sept. 3, 2002
On August 13, U.S. District Court Judge Gordon J. Quist issued an injunction against Michigan winery Chateau de Leelanau, barring it from using "Leelanau" in any trade/brand name for the sale of wine. Leelanau Wine Cellar v. Black & Red Inc., et al., 01-CV-319 (W.D. Mich. Aug. 13, 2002).
Although Chateau de Leelanau is located in Leelanau County, Michigan along the shores of Lake Leelanau (and in the Leelanau Peninsula appellation of origin) and "Leelanau" is a geographic designation, Judge Quist found that the use violated the trademark rights of nearby Leelanau Wine Cellars. Chateau de Leelanau had achieved success with the Leelanau name, most recently as a Gold Medal winner at the 2002 Michigan State Fair for its 2001 Riesling Select Harvest.
However, Leelanau Wine Cellars had obtained a US Trademark Registration based on its first use in commerce in 1987. The court probably felt that Leelanau Wine Cellars had obtained secondary meaning in the "Leelanau" mark. More information can be found on this case in the August 30, 2002 article from the Traverse City Record-Eagle.
Southcorp Loses Australian Trademarks Office Decision Involving Devil's Ridge For Wine Dec. 12, 2001
Southcorp filed an opposition in the Australian Trademarks Office against the registration of DEVIL'S RIDGE for wine by Kemeny's Food & Liquor. The Australian Trademarks Office issued a decision on July 16, 2001, stating that Kemeny's DEVIL'S RIDGE mark was not confusingly similar to Southcorp's DEVIL'S LAIR mark for wine.
Southcorp Wines Pty Ltd v. Kemeny's Food & Liquor Pty Ltd, [2001] ATMO 61 (16 July 2001).