Tuesday, December 3, 2013
2.0 units of general MCLE sponsored by LaRiviere, Grubman & Payne,
Friday, December 6th, 9:30-2:30
The California State Bar Agribusiness Committee’s annual Winery Tour will start at Kendall-Jackson Wine Estate & Gardens in Santa Rosa, California and we will visit a nearby wine production facility and vineyard. Following the tour, attendees will enjoy a lunch prepared by Kendall-Jackson’s culinary team, together with wine pairings. During lunch, attendees will learn from leading legal experts on key issues that affect product marketing in the wine industry:
The Use & Defense of Product Appellations of Origin
Scott Gerien, Dickenson Peatman & Fogarty,
Current Issues in Advertising and Marketing
Kristen Techel, Strike & Techel,
Tour begins and ends at: Kendall-Jackson Wine Estate & Gardens
This program is $50 per person, and qualifies for 2.0 hrs of general MCLE credit.
Coffee, Light Breakfast and Buffet Lunch by Kendall-Jackson Culinary Team, and wine pairings.
Please RSVP to Tabatha Morgan (firstname.lastname@example.org or (831) 649-8800) $50 per person payments should made by check payable to Kendall-Jackson.
Tuesday, November 26, 2013
In most all cases that come before the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) involving relatedness of wine and other beverages, both alcoholic and non-alcoholic alike, the Board almost always finds the goods to be related for purposes of its likelihood of confusion analysis. A likelihood of confusion analysis involves analysis of several factors, any one of which can be determinative to the outcome of the case. Usually a finding that the marks are similar goes a long way in demonstrating a likelihood of confusion.
Domaine Pinnacle, Inc. (“Domaine” or “Applicant”) is a family-owned orchard and cidery located in Quebec, Canada. Domaine applied to register the mark DOMAINE PINNACLE & Design for “apple juices” and “apple based non-alcoholic beverages.” The word “domaine” was disclaimed.
Franciscan Vineyards, Inc. (“Franciscan” or “Opposer”) a wholly-owned subsidiary of Constellation Brands Inc., an international wine company and U.S. beer importer, opposed the registration of Domaine’s mark on the grounds of priority of use and likelihood of confusion with its marks PINNACLES and PINNACLE RANCHES covering wines.
In the first step of the analysis, the Board considered the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. While acknowledging the difference in wording and the presence of a design element in Domaine’s mark, the Board found the term PINNACLE to be the dominant element in the mark and found the parties’ marks are “similar in appearance, sound, connotation and commercial impression.” Thus, the similarity of the marks weighed in favor of the Board finding a likelihood of confusion.
However, when considering the relatedness of the goods, the Board stated that “we cannot per se deem wines and non-alcoholic apple juices or beverages as related goods; rather, we must examine the particular factual circumstances of each case.”
Franciscan, as plaintiff in the proceeding, bore the burden of establishing a likelihood of confusion by a preponderance of the evidence. Here, Domaine did not even submit evidence nor file a brief with the Board. Nevertheless, the Board found that Franciscan failed to introduce evidence that the same entities produce and sell both wine and “[a]pple juices” or “apple-based non-alcoholic beverages,” or that they market the productsunder the same mark in the United States. Further, Franciscan failed to present evidence showing that the products are complementary (e.g., consumed together at the same meal), or that the goods are sold in proximity to each other in retail outlets.
The lack of evidence regarding relatedness of the goods outweighed the similarity of the marks and all other factors which favored a finding of likelihood of confusion. Thus, the Board concluded that Opposer failed to prove a likelihood of confusion by a preponderance of the evidence and dismissed the Opposition. For a full text of the case see: Opposition No. 91178682 (October 16, 2013) [not to be cited as precedent].
It just goes to show that each case must be considered on its own merits and the apple doesn’t fall far from the tree (and into the wine vat).
For more information or assistance on trademark matters contact Katja Loeffelholz at email@example.com.
Tuesday, November 19, 2013
Tuesday, November 12, 2013
Dickenson, Peatman & Fogarty attorneys Carol Kingery Ritter and Katja Loeffelholz were recently guest lecturers at Cal Poly San Luis Obispo’s new Wine and Viticulture program. The class was led by Professor William H. Amspacher who is promoting the interdisciplinary major of Wine and Viticulture. All students in the interdisciplinary major are educated about all aspects of the wine industry, with a curriculum that combines an understanding of vineyards, winemaking and wine business.
Ms. Kingery Ritter presented “Planning Your Entry Into and Exit from the Wine Industry” and discussed business planning, business structures and the acquisition of assets. Ms. Loeffelholz, a registered attorney with the United States Patent and Trademark Office presented “Protecting Your Intellectual Property Assets in the Wine Industry” which reviewed the various aspects of wine labels and packaging that can be trademarked, copyrighted and patented. Ms. Loeffelholz also presented detailed information on protecting trademarks abroad, focusing on protecting wine brands in China. Ms. Loeffelholz's presentations can be accessed at the following links:
To learn more about the Wine and Viticulture program at Cal Poly San Luis Obispo please contact Dr. Jim Cooper at firstname.lastname@example.org. For more information on how you can structure your wine business and plan for your wine business, please contact Carol Kingery Ritter at email@example.com. To obtain more information about protecting all aspects of intellectual property in your wine label and packaging in the United States and abroad please contact Katja Loeffelholz at firstname.lastname@example.org.
Tuesday, October 29, 2013
For more information on wine law issues, please contact John Trinidad (email@example.com).
Sunday, October 27, 2013
During his presentation, Mr. Trinidad provided an overview of how the spread of e-commerce influenced the Supreme Court's landmark decision in Granholm v. Heald; discussed third party marketing, California's guidelines thereto, and New York's recent hearings on Internet marketing; and also summarized the U.S. Department of Treasury's Alcohol and Tobacco Tax and Trade Bureau's social media guidelines. He also discussed the blending of social media and mobile commerce.
For more information on third party marketing, internet marketing, or wine law in general, please contact John Trinidad at firstname.lastname@example.org.