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trademark and wine label issues for wineries

trademark and wine label issues for wineries

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  • Vineyard Designations: 1) building a brand for the grower. Unless you have a long term contract, it may not be best to grow the grower’s brand
  • These are very strong brands for wine because they have little or nothing to do with wine. They also aren’t sur names so they are more likely to be remembered.
  • Conjunctive labeling requirements are being driven at the State level. January 2010 Sonoma County Vintners Assn voted to require conjunctive labeling to raise visibility of Sonoma county

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  • 1. Brand, Logo and Other IP Concerns for Wineries Scott Hervey Weintraub Genshlea Chediak Law Corporation www.weintraub.com www.theiplawblog.com @Weintraub_Law © Weintraub Genshlea Chediak 2011
  • 2. What is Intellectual Property?
    • The intangible assets of a company
      • May comprise the majority of the value of a company
      • The competitive advantage of the company
      • The reputation/goodwill of the company
  • 3. Types of Intellectual Property
    • Patents
      • Inventions
      • Designs
    • Trade Secrets
      • Secret Inventions
      • Methods
      • Customer Lists
      • Tools
    • Trademarks
      • Brands
      • Trade names
      • Trade dress
    • Copyrights
      • Photographs
      • Software
      • Web pages
      • Databases
  • 4. What is a Trademark?
    • Word, saying, logo, brand, sign, mark - even sound, color, or smell
    • Triggers association in the market with owner/source
    • Means of protecting goodwill
    • The exclusive right to use a brand (mark) for products or services
  • 5. What is a Trademark?
    • Sub-Brand
    • Logo
    • Brand
  • 6. What is a Trademark
    • Wine label designs
    • Trade dress elements
    • Vineyard Designations
      • Good for Grower/Risky for Winery
  • 7. Types of Marks
    • Common Law Marks
      • Arises from actual use
      • Protection in areas of use in commerce
    • Registered Marks
      • Federal registration (presumed ownership throughout the nation)
      • State filing also available
    • Trademarks
    • Service Marks
    • Certification Marks
    • Collective Marks
    • Trade Dress
  • 8. What is a Trademark
    • Certification Mark
      • Certifies regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services
    • Collective Mark
      • used only by members of an organization to identify their goods or services and distinguish them from those of nonmembers.
  • 9. Initial Concerns: Choice of Mark
    • Strength of trademark depends on the nature of the mark:
      • Fanciful/coined (Kodak)
      • Arbitrary (Yahoo, Apple)
      • Suggestive (Roach Motel)
        • Indicates nature quality or characteristic
      • Descriptive (Tahoe Plumbing, Park ‘N Fly)
        • Directly related to meaning
      • Generic (Escalator)
        • Common name
  • 10. Why Chose a Strong Trademark?
    • Strong trademarks accomplish source identification. More identifiable to consumer.
    • More difficult for others to infringe, intentionally or unintentionally
    • Easier and less costly to register.
      • Less chance of similarity with preexisting marks.
      • No need for costly revisions of mark.
    • Stronger Legal Protection
  • 11. Examples of Strong Marks
  • 12. Strength of Trademark
    • Descriptive marks are generally not registrable unless develop secondary meaning (acquired distinctiveness)
    • Generic marks are not registrable
  • 13. Special Labeling Issues
    • Use of an American Viticulture Area Designation (AVA)
      • 85% of the wine is from grapes from the AVA
    • Appellation of origin
      • A country, a U.S. state, and a U.S. county – i.e., Lodi County, California
      • 75% of the wine is from grapes from the appellation
    • Conjunctive Labeling
      • Requires main AVA to be used in conjunction with sub-AVA (e.g. Fair Play, El Dorado)
  • 14. Special Labeling Issues
    • US – EU Wine Accords
      • March 10, 2006 – the US agreed to limit the use of certain semi generic names on non-European wines
        • Burgundy (France), Malaga (Spain) , Chablis (France), Marsala (Italy) , Champagne (France), Moselle (France), Chianti (Italy), Port (Portugal) , Claret (France), Rhine (Germany) , Haut Sauterne (France), Sauterne (France), Hock (Germany), Sherry
      • Grandfather Provision
        • Under the “grandfather” provision, any person or his or her successor in interest may continue to use a semi-generic name on a label of a wine not originating in the EU, provided the semi-generic name is only used on labels for wine bearing the same brand name, or the brand name and the fanciful name, if any, that appear on a COLA that was issued prior to March 10, 2006.
  • 15. Special Labeling Issues
    • All Wine Labels Must Be Approved By TTB
      • Certificate of Label Approval (COLA)
        • Does not confer trademark rights
    • Organic and Other “Green” Claims
      • FTC is scrutinizing “green” claims
  • 16. Choosing a Trademark: The Search
    • What is a trademark search?
      • Snapshot of the world as it exists at the moment in time when you seek the trademark.
    • Perform a trademark search BEFORE settling on a mark.
    • Why do a trademark search?
      • Development of a trademark is costly. Before you spend money, make sure you can use it!
      • Using someone else’s trademark, even accidentally, can get you sued.
  • 17. How to Perform a Trademark Search?
    • Don’t rely on a Google Search!
      • Google DOES NOT review State and Federal Databases or other proprietary databases
    • Full trademark search includes:
      • Trademarks registered through the Patent and Trademark Office
      • Trademarks registered through local states
      • Trademarks used in various databases
      • Trademarks used in domain names
      • Unregistered business names
  • 18. Protecting Trademarks
    • Federal Registration
      • Constructive notice nationwide of the claim to ownership
      • Evidence of ownership and priority of use
      • Allows registration with US customs to prevent importation
      • Domain name disputes
    • Application
      • Use or intent to use
      • Based on foreign application/registration
  • 19. Protecting Trademarks
    • TM, ®, SM
    • Trademark owners must police their own marks
    • Why?
      • There is no governmental body that enforces marks and punishes infringement.
      • Failure to police mark can weaken protection or result in loss of mark (abandonment)
    • How?
      • No oral permission to Third Parties
        • Always grant permission in writing and with conditions restraining use.
        • Create proper licenses.
      • Demand unlicensed use immediately stop
  • 20. Licenses: Trademarks
    • The Naked License
      • Occurs when the TM owner grants permission to a third party, but does not retain the right to approve the manner (or otherwise supervise quality) in which the mark is used.
      • Effect: Mark can be cancelled by the PTO.
      • Why?
        • Mark assures consistency and quality.
        • If the mark owner insists on neither, the trademark can be lost.
  • 21. Copyrights
  • 22. What is a copyright?
    • Original work of authorship fixed in a tangible medium
      • Articles, programs, web pages, multi-media
      • Technology, software, databases
    • No protection of functional aspects
    • Exclusive right to reproduce, derivative works, copy, perform, display, transmit
      • Exceptions such as fair use for criticism, comment, teaching, reporting
  • 23. What is a copyright?
    • Generally lasts for life of author plus 70 years
    • Joint works are owned by both authors equally
    • Copyright notice
      • ©, name, and year
      • Circled “p” for sound recordings
    • Can register at later time
    • Registration allows attorney’s fee recovery, statutory damages, etc.
  • 24. Copyrights and Employees/Agents
    • Generally, author has ownership. Under Work for Hire doctrine:
      • A copyrighted work prepared by an employee within the scope of employment is owned by the employer
      • Certain types of work commissioned from an independent contractor with a written agreement may be designated as “work for hire” owned by commissioning party
      • Other types of work may be assigned
    • Need written assignment documentation with all employees/agents
  • 25. Work for Hire
    • Effect of relying on oral agreement or not using such language…
      • The contracting party owns nothing more than a copy of the work
      • Does NOT own the Copyright in the work.
  • 26. Trade Secrets
  • 27. What is a Trade Secret?
    • Various types of information (formula, pattern, compilation, program, device, method, techniques, process)
      • derives independent economic value from not being generally known or readily ascertainable by proper means by persons who can derive economic value
      • reasonable efforts to maintain its secrecy
    • A protected idea that provides a competitive advantage in a market
    • More than one person may hold a trade secret
  • 28. Trade Secret Misappropriation
    • Acquisition by improper means (known or reason to know) or under circumstances with duty to maintain secrecy/limit use (may include acquired by accident or mistake)
    • Disclosure or use without actual or implied consent
  • 29. Trade Secret Misappropriation
    • Must use reasonable efforts under circumstances to protect
      • Non-disclosure agreements
      • Employee training
      • Disclose on a need to know basis
      • Limit access and availability
      • Other internal controls
    • Policy of marking problematic if not followed
  • 30. Departing Employees
    • Very significant area of trade secret disputes. Actions for injunction or special damages if show willful and malicious.
      • Customer lists
    • Employer ownership of trade secrets
      • If relates to business of employer (for inventor) or developed on company time (other employees)
  • 31. Departing Employees
    • Public policies allowing competition
      • California prohibition of employee covenants not to compete under B&P Code 16600
      • Other states have varying levels of prohibitions
  • 32. Bringing it All Together
    • Effectively manage all your intellectual property
    • Know Your Inventory:
      • Have a firm understanding of all IP assets.
      • Yearly Review
      • Transparent communication with other departments (e.g., advertising, web design)
    • Take Reasonable Steps to Protect Your Intellectual Property:
      • Unprotected and Protected assets. Which make sense for company to pursue protection?
    • Prevent Unintended Liabilities:
      • Perform Trademark search. Don’t infringe.
      • Agreements with vendors guaranteeing right to use material (in websites, advertisements, etc.)
  • 33. Thank You