Wine, Beer, Cream Cheese, Trademarks & A Correction

Trademarks are valuable pieces of intellectual property, that help define a company or  product and differentiate it from competitors.

Trademarks can create memorable impressions that allow consumers to identify a given product or company. Great sums and efforts are often expended by companies to raise awareness of trademarks and build their value in customers’ minds.

 

Same Term, Same Product

Preventing trademark confusion is especially important when they involve the same or similar products.

It’s not hard for a layperson to understand that Duckhorn Winery would have significant and valid issues with wines that use “duck” on their labels. For that reason taking legal action against  “duck walk” or “duck blind” in wine names or on their labels is understandable.

Same Term, Similar Products

In addition, there have been several rulings that prohibit similar names on the similar products.

In a very recent case, the Trademark Trial and Appeal Board found that wine and beer were so similar, that a winery’s use of the words “No Boundary” could not be registered because of an existing winery trademark of “No Boundaries.” (Can an IPA Beer Trademark Be Confusingly Similar to a Wine? TTAB says “Yes”)

Geographic Names

However, there are other areas that are often misunderstood by the non-attorney.

This is especially true, when parts of a trademarked name contain terms  that seem — to the layperson — to be common words or places.

I made just such a misunderstanding this week when I wrote a snarky headline for a Central Coast trademark issue.

My headline was written under the mistaken impression that such geographic name uses were not appropriate for  trademarks.

That is clearly not the case.

Cream Cheese

While U.S. law has evolved over the decades, it clearly allows the use of geographic names in trademarks.

One of the best examples of that is “Philadelphia” cream cheese. This is a long-standing trademark of craft foods and is clearly an accepted and valid trademark.

Likewise, in the Central Coast example, using the town name of Cambria in a trademark was legal and appropriate. And as we’ve seen from recent rulings (above) wine and beer are similar enough for confusion when using the same name.

Correction

For all of those reasons, I made an error in the tone of my headline and apologize to readers for creating a mistaken impression.

Further Reading

For those readers who want to dig deeper, I recommend the following law review article which helped me understand the issue better: “GEOGRAPHIC TRADEMARKS AND THE PROTECTION OF COMPETITOR COMMUNICATION“By Robert Brauneis and Roger E. Schechter