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Friday, June 28, 2013

Water = Wine? Joel Gott Wines Defeats GOTT LIGHT Trademark for Water



On June 26, 2013, the Trademark Trial and Appeals Board ("TTAB") of the U.S. Patent and Trademark Office ("USPTO") sustained the opposition filed by Joel Gott Wines ("JGW") against the trademark application for GOTT LIGHT and Design for water based on JGW's prior registrations for GOTT and JOEL GOTT for wine.


A copy of the decision may be found at the following link:

http://ttabvue.uspto.gov/ttabvue/v?pno=91197659&pty=OPP&eno=48

When evaluating the issue of likelihood of confusion between two trademarks the principal considerations are the similarity of the marks and the similarity of the goods.  When no similarity is found as to one of these two categories, there is almost always a finding of no likelihood of confusion.

In this case, the issue of similarity was fairly cut and dry.  GOTT and GOTT LIGHT are obviously similar given the dominant use of the term "GOTT."  The marks JOEL GOTT and GOTT LIGHT were also found to be similar given that both marks contained the term "GOTT" and the fact that the term "JOEL" connotes a persons name giving emphasis to the term "GOTT."

The more interesting part of this case was the finding as to similarity of the goods: water and wine {insert bad religious pun here}.  Goods are generally found to be similar and related if they are complimentary, move through the same channels of trade, or if there is evidence that the same mark is not uncommonly used on both types of goods.  In this case, JGW submitted evidence that demonstrated that it is fairly common for wineries to offer water in their tasting rooms that is branded with the same mark as their wine.  JGW also submitted evidence that demonstrated that water and wine are sometimes sold in the same areas of a store, or will appear in the same section of restaurant menus.  Additional evidence demonstrated that wine and water are also used in a complimentary fashion such as for mixed drinks like a wine spritzer.  

Given all of this evidence, the TTAB concluded that water and wine are related goods, and given the similarity between the marks at issue, there existed a likelihood of consumer confusion between the JGW marks for wine and the GOTT LIGHT mark for water.  Accordingly, the trademark application for GOTT LIGHT was denied.

This case was designated by the TTAB as precedential meaning it can serve as a basis to support findings in future cases.  Typically, the TTAB only designates about fifty cases as precedential in a calendar year.

Dickenson, Peatman & Fogarty is proud to have represented Joel Gott Wines in this case.

For any questions or assistance on trademark matters or TTAB opposition proceedings contact Scott Gerien at sgerien@dpf-law.com.

Monday, June 24, 2013

Chateauneuf-du-Pape Syndicat Denied by USPTO in Attempt to Protect Appellation

Like a bottle of Chateauneuf-du-Pape
I'm fine like wine when I start to rap
We need body rockin', not perfection
Let me get some action from the back section

~ "Body Movin'" by The Beastie Boys

The Beastie Boys cannot be pleased and there undoubtedly will be no body rockin' at the Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape.  

On June 14, 2013, the U.S. Patent and Trademark Office ("USPTO") Trademark Trial and Appeal Board ("TTAB") issued a decision denying an opposition brought by the Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape against negociant Pasquier DesVignes which applied to register the trademark CHEMIN DES PAPES for wine.  The Syndicat asserted a claim of confusing similarity based on a registered trademark for CHATEAUNEUF-DU-PAPE CONTROLE and Design for wine in class 33 (see below) and based on an alleged common law certification mark for CHATEAUNEUF-DU-PAPE for wine.  



A link to the decision may be found here:


While not krush groovin', the case is quite interesting (to trademark lawyers and appellation geeks) on many levels.  One of the more interesting issues (although not electro-shocking) is the strategy employed by the Syndicat in protecting the geographical indication "Chateuneuf-du-Pape" and how this played out in the opposition refusal.  

The Syndicat claimed that it owned a common law geographical certification mark for CHATEAUNEUF-DU-PAPE under U.S. law as a result of the control it asserted over the appellation "Chateuneuf-du-Pape." However, the TTAB found that the Syndicat could not claim ownership of a common law geographical certification mark in CHATEAUNEUF-DU-PAPE because there was evidence that other entities also controlled the use of the appellation, most notably L’institut National de l’Origine et de la Qualité ("INAO"), the French governmental agency in charge of appellation standards throughout France.  The TTAB also noted that there was no evidence that there were any agreements between the Syndicat and these other parties as to control of the appellation (this is in contrast to other cases where the  Bureau National Interprofessionel du Cognac successfully proved a common law geographical certification mark in COGNAC by demonstrating its relationship with INAO).  As a result, the TTAB found that the Syndicat could not claim common law rights in CHATEAUNEUF-DU-PAPE as a geographical certification mark as it did not appear to have exclusive control over the term.  Thus, the common law certification mark claim was not to be the Syndicat's hyperspace in this game of Defender.

As a side note, during its analysis the TTAB did acknowledge that CHATEAUNEUF-DU-PAPE is a geographical indication, which we believe is the first time that the USPTO, or any other US governmental body, has acknowledged a term as a “geographical indication” thereby recognizing the legal significance of geographical indications in the U.S. This is of some consolation to some proponents of geographical indications, but not the robotic-satisfaction for which others may have hoped.

Having found that the Syndicat could not assert rights in a common law certification mark in CHATEAUNEUF-DU-PAPE, the TTAB turned to the claim of likelihood of confusion based on the registered trademark for CHATEAUNEUF-DU-PAPE CONTROLE and Design in class 33 for wine. The TTAB analysis of the fame of the CHATEAUNEUF-DU-PAPE CONTROLE and Design trademark turned back again to the issue of who actually controlled the appellation. The TTAB repeatedly questioned evidence of fame of the mark based on sales and advertising of wine identified as CHATEAUNEUF-DU-PAPE noting that the Syndicat did not own or exclusively control the appellation, but rather the mark CHATEAUNEUF-DU-PAPE CONTROLE and Design.  Thus, evidence of sales and marketing for all CHATEAUNEUF-DU-PAPE wine could not support a claim that the Syndicat's mark CHATEAUNEUF-DU-PAPE CONTROLE and Design was famous.  So perhaps some body rockin', but not perfection.

At the end of the day, whether or not the Syndicat was able to demonstrate that it owned common law rights in CHATEAUNEUF-DU-PAPE as a geographical certification mark was probably a moot point given the fact that the TTAB ultimately determined that CHEMIN DES PAPES and CHATEAUNEUF-DU-PAPES and Design were simply not similar given the differences between the marks and the fact that there were numerous other third party “PAPES” marks for wine in the marketplace such as L’ESPRIT DE PAPE, CAVES DES PAPES and VIEUX PAPES.


This case is a good read for anyone interested in the intersection of geographical indications and trademarks and highlights the difficulty of trying to protect geographical indications as certification marks under U.S. law.  Tell me party people, is that so wrong?

For questions or assistance on trademarks and geographical indications contact Scott Gerien at sgerien@dpf-law.com. 

Sunday, June 23, 2013

Third Party Providers: Current state of play in California and New York


The June 2013 edition of Wines & Vines Magazine / Practical Winery & Vineyard Journal contains an article by DP&F's John Trinidad on working with Third Party Providers to increase winery sales.  The article discusses the current state of play in both California and New York -- two of the top wine consuming states in the U.S.

Click on the image below or on this link to view a PDF of the article (made available with the permission of Wines & Vines / Practical Winery & Vineyard).



For more information or assistance regarding third party providers, contact John Trinidad (jtrinidad@dpf-law.com).

This post is made available for general informational purposes only and none of the information provided should be considered to constitute legal advice

Tuesday, June 4, 2013

TTB Ruling on Voluntary Serving Facts Statements for Alcohol Beverage Labels and Advertising

Last week, the TTB issued an interim policy (TTB Ruling No. 2013-2) allowing alcohol beverage producers to voluntarily use nutrient content statements –often referred to as  “Serving Facts statements ”– on labels and advertisements.  The TTB’s ruling is part of an almost decade-long review of the use of nutrient content statements on alcohol beverage labels and advertisements.  

Exemplar from TTB of Serving Facts Statement for 750ML bottle of wine
(NOTE:  ABV and fl. oz of alcohol are optional)

Wine producers wishing to use Serving Fact statements on bottle labels should review the Ruling, and keep the following points in mind.

  1. Serving Facts statements include the following information:  serving size, the number of servings per container; and the number of calories, grams of carbohydrates, protein, and fat per serving size.
  2. For wine of 7-16% ABV, the average serving size is 5 fluid ounces; for wine over 16% ABV but less than 24% ABV, the average serving size is 2.5 fluid ounces.
  3. The Serving Facts panel may include (but does not need to include) the percentage of alcohol by volume.  If the Serving Facts statement includes the ABV, then it may also include a statement of the number of ounces of alcohol per serving.  However, the inclusion of ounces of alcohol per serving does not relieve an industry member from their obligation to comply with other regulations regarding the disclosure of alcohol by volume.
  4. The tolerances and lab procedures for testing calorie, carbohydrate, protein, and fat content is laid out in TTB Procedure 2004-1.
  5. No new COLA is required for simply adding a Serving Fact panel to your already approved label.  In other words, you can simply add a neck or strip label to your already approved wine bottle label without submitting a new COLA application.
  6. The rulemaking process regarding the use of Serving Fact statements is still ongoing and producers should keep in mind that the TTB ruling is simply a temporary policy until the rulemaking process is completed. 

The TTB's decision to allow producers to include information regarding the fluid ounces of alcohol per serving is of particular interest to wine industry members.  The Wine Institute previously opposed the the inclusion of such information on Serving Fact statements, claiming that it would be confusing for consumers.  Other alcohol beverage industry members, primarily Diageo, have been outspoken in their support of alcohol-per-serving statements. 

For more information or assistance on TTB labeling issues, contact John Trinidad (jtrinidad@dpf-law.com).

This post is made available for general informational purposes only and none of the information provided should be considered to constitute legal advice