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A bill was introduced to the Oregon Senate last week which proposes to amend several sections of the Oregon Revised Statutes, namely ORS 471.445 and ORS 471.446. The Senate Bill, SB 111-1, proposes significants changes to the Oregon Revised Statutes with respect to wine labeling, many of which will directly impact wineries located in other states who source bulk grapes, juice, or wine from Oregon and fully finish or bottle or package the wine outside of Oregon.

ORS 471.445 currently speaks to using misleading marks or labels on a container and forbids an industry member licensed under Chapter 471 of the Oregon Revised Statutes from using such marks or labels in “any way might deceive any customer as to the nature, composition, quantity, age or quality of such liquor.” ORS 471.445(1). SB 111-1 proposes several language changes to ORS 471.445 but also adds the following provision to ORS 471.445(1):

In addition, a licensee may not use or allow the use of any mark or label on a container of wine that the licensee keeps for sale, if the container in any way might deceive any customer as to the origin or geographic designation of the wine.

ORS 471.446 currently speaks to seals on wine and cider containers and its second provision states the “Oregon Liquor Control Commission may refuse to sell, or may prohibit any licensee from selling, any brand of alcoholic liquor which in its judgment is deceptively labeled or branded as to content, or contains injurious or adulterated ingredients.”

SB 111-1 proposes to make several significant changes to ORS 471.446. First, 471.446(2) is amended to extend to include alcohol which is deceptively labeled or branded as to its origin or geographic designation. In addition, SB 111-1 proposes to at provisions three (3) through six (6). Provision (3) provides an explanation of when a wine is considered to be deceptively labeled or branded when using ‘Oregon,’ an Oregon county, or another geographic designation of Oregon on its label or packaging. Provision (4) discusses when a wine is considered to be deceptively labeled or branded when using an AVA located wholly or partially within Oregon.

While industry members producing wine in or purchasing wine or grapes from Oregon should familiarize themselves with the proposed changes to 471.446, the following additions 471.446(6)(a) and (c) are worth highlighting:

(6)(a) A wine is deceptively labeled or packaged as to origin if:

(A) The wine is in whole or in part from Oregon grapes that were made into wine outside of Oregon;

(B) The wine label or packaging uses an Oregon name or other geographic designation; and

(C) Either the label or packaging does not identify the state where the wine was produced by bearing the words ‘Produced in (name of state)’ immediately preceding, and in a font twice the size of, the Oregon name or geographic designation.

(6)(c) A wine is deceptively labeled or packaged as to origin if:

(A) The wine is fully finished in Oregon and is packaged outside of Oregon;

(B) The wine label or packaging uses an American Viticultural Area located wholly or partially in this state or a derivative name; and

(C) Either the label or packaging does not identify the state where the wine was vinted by bearing the words ‘Vinted in (name of state)’ immediately preceding, and in font twice the size of, any use of the American Viticultural Area or derivative name.

The use of “and” in (6)(a) and (6)(c) would require all three elements to be present in order for the Oregon statute to consider the wine to be deceptively labeled or packaged. It is also worth mentioning that (6)(a) seems to focus more on wines that are fermented or otherwise fully finished outside Oregon whereas (6)(c) speaks to wines that are fully finished in Oregon but packaged or bottled in another state.

The Senate Bill is a response to an ongoing circumstance in the industry where some companies are sourcing wine or grapes from Oregon, referencing or stating Oregon geographical places of origin on the label, and providing the name of a state other than Oregon in the bottled/cellared/vinted/etc. statement. Oregon wine industry argues that this practice is misleading, especially to an unsuspecting consumer who may only look to the front-most portion of the bottle and assume that a reference or Oregon or a more specific geographical region in the state is likely to imply the wine is indeed fully finished and bottled within the state. The proposed bill seeks to tighten the gap and to demand more transparency in wine labeling.

For more information on wine or alcohol law, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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Last week, TTB reported that the agency suspended six (6) alcohol beverage permits between December 2018 and January 2019 for violations of consignment sale provisions of the Federal Alcohol Administration Act. Four wine wholesalers and two wineries faced a one-day stipulated permit suspension; a fifth wholesaler who was under investigation opted to surrender its permit. As reported by TTB, the suspensions and surrender resulted from investigations through a joint effort with the California Department of Alcoholic Beverage Control in March 2018. Some more details can be found here.

Consignment sales are illegal at the federal level; engagement in consignment sales can also be illegal at the state level. Federally, 27 CFR § 11.21 states that it is unlawful for an industry member to “sell, offer for sale, or contract to sell to any trade buyer, or for any such trade buyer to purchase, offer to purchase, or contract to purchase any products a) on consignment; or (b) under conditional sale; or (c) with the privilege of return; or (d) on any basis other than a bona fide sale; or (e) if any part of the sale involves, directly or indirectly, the acquisition by such person of other products from the trade buyer or the agreement to acquire other products from the trade buyer.” In the cases disclosed by TTB, industry members engaged in consignment sales of wine to trade buyers who were not required to pay for the wine until the wine was sold to retailers.

TTB sees consignment sales as an unlawful trade practice that is used to gain an unfair competitive advantage in the industry. In some instances, engaging in consignment sales can restrict or limit consumer choices.

Other types of unlawful trade practices—including exclusive outlet, tied house, and commercial bribery—are also regulated at the federal level and can carry significant financial penalties and risk suspension or surrender of a permit. Industry members should be aware that many of these unlawful trade practices are also regulated at the state level.

For more information on wine or alcohol law, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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Join Denise Gardner of Denise Gardner Winemaking and me at the 2019 Eastern Winery Expo in Syracuse, New York March 19th through 21st for a discussion on formula wines and their enology and regulatory issues. A description of our event is provided below.

Formula wines (those with non-wine flavorings like vanilla, chocolate or colors added) are taking off in popularity–and can have a host of both chemistry and regulatory issues. This session brings a consultant enologist and an alcohol legal expert together to explain the most important things to know, and the TTB resources to use, in getting approval for your formula wines, from both the TTB and your customers.

The 2019 Eastern Winery Expo schedule is available here and includes two full days of events and one full day of workshops. Registration is now open and includes reduced rates through February 14th.

For more information on wine or alcohol law, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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According to Wine Business, the Oregon Liquor Control Commission (“OLCC”) submitted a letter to TTB in regard to a Napa Valley wine company’s alleged non-compliance with TTB labeling and advertising regulations. The complaint argues that the Elouan and The Willametter wines produced by Copper Cane LLC of Rutherford, California—which boast Oregon American Viticultural Areas (“AVAs”)—may not have been fully finished in Oregon. Purportedly, bulk wine produced in Oregon is purchased by Copper Cane LLC who vints and bottles the wine at its winery in Rutherford. These same wines contain Oregon AVAs, such as Willamette Valley, Umpqua Valley, and Rogue Valley.

In order for a wine to be labeled with an American Viticultural Area as its appellation, 27 CFR 4.25(e)(3)(iv) requires that the wine be fully finished within the State (or one of the States, in the case of multi-state AVAs) within which the labeled AVA is located. There are minor exceptions (cellar treatment pursuant to 27 CFR 4.22(c) and blending which does not result in an alteration of the wine’s class and type under 27 CFR 4.22(b)). The letter sent to TTB indicates that, while Copper Can LLC may process some of the wine grapes in Oregon, it is unclear whether those grapes are fully finished into wine before leaving Oregon or if the wine is finished in California (which would likely disqualify the wine from asserting the AVA under federal regulations). This is information that should be available through the winery’s records (for bottling, bulk transfer, and production).

Interesting to note is that the labels cited by Wine Business show the terms “Vinted & Bottled by Elouan, Rutherford, California” (labels also shown in this article). TTB’s regulations are very specific with respect to using either term “vinted” or “bottled.” (TTB regulations also clearly define terms like cellars, prepared, produced, made, and blended.) Each word is very carefully defined by the agency. For example, 27 CFR 4.35(a)(2)(v) defines “vinted”—when used in the name/address statement on the label—to mean that “the named winery, at the stated address, subjected the wine to cellar treatment in accordance with §4.22(c).” (Per the paragraph above, cellar treatment in compliance with §4.22(c) is permitted for wines labeled with AVAs if the cellar treatment did not occur in the state of the named AVA.)

It is not uncommon for us, as wine lawyers, to see some of our clients improperly use the term “vinted” on their wine label drafts (pre-submission to TTB). Generally, it is an innocent mistake (i.e., looking to another winery’s label as a guideline and/or misinformation about TTB’s definition of “vinted”). For Copper Cane LLC, cellar treatment in compliance with 27 CFR 4.22(c) would be permissible under federal regulations on its AVA-labeled wines; however, the issue in the letter cited by Wine Business seems to be that OLCC and similar believe more than just cellar treatment may occur or have occurred outside of Oregon.

For more information on wine law, alcohol law, or trademark law, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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Kevin J. Fandl, J.D., Ph.D. is again leading a faculty trip to study innovation in Chile focused on wine. He sends the following message and attached flyer:

Dear colleagues,

I am pleased to share the attached invitation with all of you regarding an upcoming (January 2019) peer-to-peer faculty immersion in Santiago, Chile, organized by the Fox School of Business at Temple University as part of our Center for International Business Education and Research (CIBER) program. This one-week trip will engage participants with high-level meetings at key business entities, tours and tastings at amazing vineyards, and interactions with local faculty and professionals at social and cultural events in Chile, in addition to academic content around innovation in Chile. The focus of the trip is on innovation in Chile, so our interactions will focus on entrepreneurs and industries that are innovating to stay on the cutting-edge of business. This is the second year that we are running this trip and we expect it to be an unforgettable experience. Faculty from all disciplines and all schools are invited to register for this experience, though they should do so promptly as space is limited on this trip.

For questions about the content of the trip, feel free to reach out to me directly. For registration or logistics questions, please contact Phyllis Tutora at ptutora@temple.edu

Registration Link: https://noncredit.temple.edu/templeciberfdib

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On Thursday, September 27, 2018, the Supreme Court granted cert to a new case involving Granholm-like issues for the alcohol beverage wholesale and retail tiers. See Certiorari Granted.

The case, Tennessee Wine and Spirits vs. Byrd Clayton, stems from a Tennessee law which requires in-state retail license applicants to satisfy residency requirements. The law requires that an individual applying for a retail license in Tennessee be a resident of the state for at least two years before applying for a license. TN Code § 57-3-204(b)(2)(A). Further, the state’s law prohibits capital stock from being owned by individuals who have not been residents of Tennessee in the last two years. TN Code § 57-3-204(b)(3)(B).  The case questions whether the state’s residency requirements discriminate against out-of-state residents and thus violate the Dormant Commerce Clause of the U.S. Constitution.

The Sixth Circuit originally ruled that  Tennessee’s laws violated the Dormant Commerce Clause, affirming the district court decision. Tennessee Retailers Association filed a Petition For A Writ Of Certiorari before the Supreme Court, which granted the petition. Interested industry members can expect the case to be argued before the Supreme Court in 2019.

While the specific case at issue is not a straightforward direct-to-consumer retailer shipping case, the outcome of the Supreme Court’s decision could certainly shed light on treatment of retailers with respect to direct shipping. The practice of retailer direct shipping, and (some) state discriminatory treatment of out-of-state retailers, has been an industry debate since the Granholm decision in 2005 (which did not apply to retailers). Stay tuned as we report on highlights of the case and summarize important updates.

For more information on wine law, alcohol law, or trademark law, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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The USPTO Trademark Trial and Appeals Board (“TTAB”) recently issued two relevant decisions to the wine industry. The decisions are summarized below.

In re En Primeur Wines, Inc., Serial No. 87170488 (July 18, 2018) [not precedential]: En Primeur Wines, Inc. (“Applicant”) sought registration on the Principal Register of the mark MY EN PRIMEUR (in standard characters, with EN PRIMEUR disclaimed) for “on-line retail store services featuring wine” in International Class 35. Id. at 1. The Trademark Examining Attorney (“EA”) originally refused registration of the mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) on the ground that Applicant’s mark resembled EN PRIMEUR WINERY SERIES (in standard characters with WINERY SERIES disclaimed) and EN PRIMEUR WINERY SERIES (design with EN PRIMEUR WINERY SERIES disclaimed) for “Kits for making wine at home” in International Class 33. Id. at 2. The EA stated that Applicant’s mark was likely to cause confused, mistake, or deception. Applicant appealed EA’s final refusal. The Board based its decision on Registration No. 5189063 (for standard characters), as the Board said it was more similar to Applicant’s mark.

In regard to similarity and dissimilarity of the marks analysis, Applicant argued that EA did not give proper weight to the word “MY” in Applicant’s mark. Applicant further argued that the registered mark was entitled only to a narrow scope of production because “EN PRIMEUR” was descriptive and the entirety of the phrase on the registered mark was descriptive and weak. Applicant further argued that the marks sound and look different, have different meanings, and create a different commercial impression. Overall, Applicant argued that the EA focused too much on the shared term between Applicant’s mark and the registered mark. The Board agreed with the findings of the EA, reasoning that similarity or dissimilarity is based on the marks in their entireties and not on dissecting marks into components; that being said, the Board reasoned that it was not improper to state that more or less weight is given to a particular feature of a mark as long as the ultimate conclusion rests on the entireties of the marks. Id. at 5–6. Applicant submitted a significant amount of evidence to argue that EN PRIMEUR is a weak mark when used in connection with wine; the Board agreed that EN PRIMEUR was “somewhat conceptually weak” when used with wine or related services but did not agree that the term was descriptive. Id. at 8. Instead, the Board explained that the EN PRIMEUR is used more as a term of art in the French wine industry and by investors and wine merchants; the Board did not believe it would be a phrase that ordinary wine drinkers in the United States would be familiar with. Id. at 8–9.

Viewing Registrant’s mark as a whole, the Board found that the disclaimed phrase WINERY SERIES was less distinctive than EN PRIMEUR because it is descriptive of the goods. Id. at 9. Further, the placement of EN PRIMEUR at the beginning of the mark enhanced its prominence. With respect to Applicant’s mark, the Board found that the use of “MY” had less trademark significance than EN PRIMEUR and that EN PRIMEUR was the dominant element and that the placement of “MY” asserted the dominance of MY PRIMEUR. Id. at 10.  Thus, the Board decided that EN PRIMEUR is entitled to more weight in the analysis of the two marks; without much discussion, the Board quickly resolved that the two marks were similar in appearance, sounds, and connotation due to the common presence of EN PRIMEUR. Id. at 11.

In its relatedness of goods and services and channels of trade analysis, the Board reasoned that, while the goods in the registration were not identical to Applicant’s services, this did not disclaim a finding of relatedness. Instead, the record showed that the goods and services were “commercially related.” Id. at 13 (based on significant evidence from EA indicating that one source can sell both wine and supplies for making wine at home under the same mark). The Board thus found the services identified in the application to be related to the goods in the registration, and that consumers would believe that the goods and services emanated from a common source. After a short discussion on the channels of trade, the Board affirmed the prior refusal to register Applicant’s mark under Section 2(d).

In re Night Wines, LLC, Serial No. 87084959 (June 20, 2019) [not precedential]: Night Wines, LLC (“Applicant”) sought registration on the Principal Register of the standard character mark NIGHT for “wine” in International Class 33. The EA originally refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) on the ground of likelihood of confusion because Applicant’s mark is the English translation of a registered mark NOCHE (in standard characters) for wine. Id. at 1–2. Applicant appealed to the Board after EA denied a request for reconsideration; an oral hearing was held on May 2018.

The Board initially gave background on an evidentiary matter that surfaced during its request for reconsideration and appeal brief (detailed on Pages 2 through 5) before developing its likelihood of confusion analysis. In the latter, the Board first discussed the identity of the goods, their trade channels, and consumers. Without much (or any) discussion the Board quickly found that the goods were identical and thus presumed the channels of trade and classes of customers were the same.

With that quick finding, the Board then discussed the similarity of the marks, including the commonality of the letters “N” and “H.” From a sound perspective, the Board reasoned there “is no reason to believe the marks will sound alike when spoken.” Id. at 7. The EA argued that the Doctrine of Foreign Equivalents applied with respect to connotation and commercial impression. Applicant argued that the registration for NIGHT should not be refused based solely on the translation from English to Spanish and reasoned that the Doctrine of Foreign Equivalents is limited to meaning only. Id. The Board agreed that the Doctrine applied and that ordinary purchasers of wine would understand that NIGHT translates to NOCHE (and vice versa). Id. at 8.

The Board interestingly discussed one of the prior decisions cited by Applicant, which involved an applicant mark for TIA MARIA and a registrant mark of AUNT MARY’S; the Board in In re Night Wines, LLC reasoned that the prior decision took into account the context in which consumers would encounter the marks as well as their connections to the goods and services. The Board reasoned that the case at hand differed, as it must consider that consumers will be encountering the marks on the same exact goods (i.e., wine). For the above reasons, the Board found that the similarity of the marks based on the same meaning outweighed the differences in sound and appearance. Id. at 10.

Finally, Applicant pulled use of the term MIDNIGHT on wine by third parties (via TTB COLAs) and argued that it demonstrated the number and nature of similar marks, by which consumers were not confused. The Board disagreed and said that a COLA does not indicate third-party use of the marks in commerce, that MIDNIGHT has a different meaning, and that there was no compelling evidence to show that either NIGHT or NOCHE were weak.

Therefore, the Board found in favor of likelihood of confusion and affirmed the refusal to register Applicant’s mark.

For more information on wine law, alcohol law, or trademark law, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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It is with great excitement that I share the launch of Jus Vini, The Journal of Wine & Spirits Law. Jus Vini is the new international journal on wine and spirits law edited by the University of Reims’ Wine & Law Program — A Jean Monnet Chair. The journal is a bilingual, peer-reviewed legal journal published twice a year (June and December) and promotes legal scholarship in the field of wine and spirits law. (The journal is published in both English and French.) Jus Vini‘s first issue was published in June this year and features a great selection of materials from international wine and spirits lawyers and scholars ranging from China to the E.U. to Australia to the U.S. The pieces cover both national and international issues relating to legal updates, discussions on global wine law, and protection of geographical indications. Jus Vini is an essential read for any alcohol beverage lawyer interested in learning more about global issues impacting the industry.

Jus Vini features articles, essays, case law notes, reports, briefs, and book reviews on national and international laws that impact the wine and spirits industries. Subscriptions are available online through Directabo, via phone (+33 (0)4 93 44 06 96), or by bank transfer. For more information, please see the Subscription Form or contact jus.vini@wine-law.org.

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The USPTO Trademark Trial and Appeals Board (“TTAB”) recently issued three relevant decisions to the wine, beer, and spirits industries. The decisions are summarized below.

In re El Galan, Inc., Serial No. 86961428 (February 1, 2018) [not precedential]: El Galan, Inc. (“Applicant”) sought registration of the mark TERNURA in standard characters for “cigars” in International Class 34. Originally, the Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act for likelihood of confusion with the registered mark TERNURA for “liquor; tequila, vodka; wines” in International Class 33. Applicant appealed to the USPTO TTAB, who affirmed the original refusal. The Board reasoned that the marks were identical (even though Applicant attempted to argue that the marks convey a different commercial impression with respect to the goods because they travel in different trade channels and use different packaging, which the Board found to be unpersuasive). Specifically, the Board stated, “Notwithstanding, while cigars and alcoholic beverages may be packaged differently, consumers may nonetheless be confused as to the source of the goods when their packages bear the identical trademark.” Id. at 5.

In its similarity of goods analysis, the Board highlighted that the goods need not be identical but that it is sufficient that they be related in order to weigh in favor of likelihood of confusion. The Examining Attorney provided third party evidence showing that third parties produce and offer for sale both alcohol beverages and cigars under the same mark and also argued that the goods are “complementary products” because they can be marketed together and be consumed simultaneously. Id. at 8. The Board determined complementary can be relevant and reasoned that complementary use, in conjunction with the arbitrary mark TERNURA, supported the argument that the marks could be encountered by the same consumers who may believe the goods originated from the same source. Interestingly, the Board cited similar cases related to whiskey and cigars which contained similar facts and results (John Walker & Sons Ltd. v. Tampa Cigar Co., 124 F. Supp. 254, 103 USPQ 21 (S.D. Fla. 1954), aff’d 222 F.2d 460, 105 USPQ 351 (5th Cir. 195)) as well as whiskey and cigarettes (Geo. A. Nickel Co. v. Stephano Bros., 155 USPQ 744 (TTAB 1967)). The Board easily found that the marks were identical, that the goods were related and complementary, and that the goods moved in similar trade channels and are offered to the same or similar classes of purchasers. Thus, the Board affirmed the Examining Attorney’s decision to refuse the registration. This case is interesting for industry for the obvious point that the Board has found other non-alcohol beverage products related (See, e.g.,  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424 (TTAB 2013) [precedential] with respect to water and wine as well as From Water to Wine (Trademark): Joel Gott Wines v. Rehoboth Von Gott).

In re Bear Creek Distillery, LLC, Serial Nos. 87026602 and 87026770 (May 1, 2018) [not precedential]: Bear Creek Distillery, LLLP (“Applicant”) filed two applications for trademark registration (one for BEAR CREEK DISTILLERY in standard characters and one for a design mark) in International Class 33 for spirits; spirits and liqueurs; and distilled spirits. The Examining Attorney refused registration of the marks on the grounds of likelihood of confusion with the mark BEAR CREEK for “wines” in International Class 33. The Board affirmed the refusal to register both marks.

Applicant argued that there is widespread use of the mark BEAR CREEK with wines, attempting to show weakness of the protected mark. Evidence submitted by Applicant included third party use of the term BEAR CREEK with respect to a winery and lodging, a wine company, a wine trail, and another winery. The Board reasoned that three of the examples showed BEAR CREEK in connection with wine-related services but not actually in association with wine themselves, which limited the probative value of the evidence provided by Applicant.

Applicant tried to argue that the differences in the marks in sound and appearance were sufficient to distinguish the marks, but the Board rejected this and reasoned that the decision must be based on the entireties of the marks and not just parts of the marks. The Board went on to discuss channels of trade, ultimately finding that the goods were closely related and sold through the same channels of trade to the same class of purchasers.  Thus, the Board found in favor of likelihood of confusion and affirmed refusal to register.

In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181 (TTAB 2018) [precedential]: Aquitaine Wine USA, LLC (“Applicant”) sought to register the mark depicted here:

for “Wine of French origin protected by the appellation of the origin Cité de Carcassonne” in International Class 33 (Cité de Carcassonne was disclaimed). The Examining Attorney originally refused the registration on grounds of likelihood of confusion with the mark CHATEAU LAROQUE for “Wines having the controlled appellation Saint-Emilion Grand Cru” in International Class 33. Applicant appealed.

In its analysis, Board unsurprisingly noted that while Applicant’s mark contained a design element, the term LAROQUE was the dominant element and that, because of its position, size, and bolding, the term dominated the commercial impression of Applicant’s mark. Applicant creatively argued that wine consumers pick wines today based on the images on labels and the dominant mark is the design of the wine label as a whole; the Board reasoned that, assuming such to be true, Applicant’s mark is not equivalent to a wine label (which generally contains more information).

Interestingly, this opinion presented opportunity for the Board to discuss the method of comparing design marks with a standard character mark (following up to a prior appellate court decision which indicated that future cases could determine appropriate methods to compare design and standard character marks). The Board held that, when comparing a standard character mark to a word plus design mark for Section 2(d) purposes, they will consider “variations of the depictions of the standard character mark only with regard to ‘font style, size, or color’ of the ‘words, letters, numbers, or any combination thereof.’” Id. at 11 (citing Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Circ. 2012).

In this case, the Board said the visual image or picture in Applicant’s mark would be taken into account in the du Pont analysis. However, the drawing of a large estate home or chateau would correspond to or call to mind the word CHATEAU in Registrant’s mark and convey similar connotations and commercial impressions. Thus, the Board determined the first du Pont factor weights in favor of finding a likelihood of confusion.

The Board next examined the similarities between the goods, trade channels, and classes of consumers. Applicant argued that French consumers know that part of a wine brand ties the wine to a specific region and that its mark reflects the geographic source of the goods. The Board noted that the Registrant’s mark did not indicate that the wine originates from Saint-Emilion and nothing in the record showed the goods must display geographic terms. Notably, consumers purchasing the Registrant’s wine were more likely to remember LAROQUE or CHATEAU LAROQUE as opposed to the geographic origin.

After a discussion of the sophistication of purchasers, the Board found that consumers familiar with Registrant’s wine would be likely to believe that Applicant’s wine originated from, is associated with, or sponsored by the same entity. Thus, the Board affirmed the refusal to register under Section 2(d).

For more information on wine law, alcohol law, or trademark law, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

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CLE International is again hosting its Wine, Beer, and Spirits CLE. This year, the program will take place in Chicago on October 4th and 5th at the Millennium Knickerbocker hotel. Attendees can earn up to 12 hours of MCLE credits including one hour of ethics.

Registration is currently open and can be completed through its website here. There is an optional pre-conference session and welcome session. The pre-conference session will include a lecture on The ABC’s of ABC: An Introduction to Alcohol Beverage Law (by Mr.  James M. Seff) and a Trade Practice Update: Overview of Recent Development and TTB Investigations (by Mr. Marc Sorini).

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