Spirits Branding in 2016 and Beyond John Messinger Daniel Christopherson

Spirits Branding Goals Pick a strong mark, that is available for use and registration at the USPTO, that will be approved by TTB, that will be approved by state and local authorities, and that won’t get you sued

1. Strength: Inherent Distinctiveness Generic Descriptive Suggestive Arbitrary Fanciful “Whisky” “Guaro” “Charred-Keg” “Old Crow” “Sauza” Spectrum of Distinctiveness

1. Strength: Other Considerations Primarily a surname Geographically descriptive/misdescriptive False suggestion of a connection with a person/organization Third party use Fame

2. USPTO: Grounds for Refusal Immoral or scandalous – TMEP 1203.01 Deceptive – TMEP 1203.02(b) Disparaging or False connection – TMEP 1203.03 Geographically misdescriptive – TMEP 1210 2(b): Flags, coat of arms, or other insignia of a nation – TMEP 1204 2(c): living individual or deceased US President – TMEP 1206 2(d): likelihood of confusion – TMEP 1207, 1208 2(e): merely descriptive – TMEP 1209 Geographically descriptive – TMEP 1210 Merely a surname – TMEP 1211

2. USPTO: Geographic Marks 15 USC § 1052: No trademark … shall be refused registration … unless it: consists of … a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods…. Terms including: Tequila, Mezcal, Scotch Whisky, Irish Whisky, Cognac, Calvados, Irish Cream, Champagne, Ouzo. consists of a mark which when used on or in connection with the goods of the applicant is primarily geographically descriptive of them… when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them

2. USPTO: Surnames 15 USC § 1052: No trademark … shall be refused registration … unless it: Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive

3. TTB: Mandatory Statements Brand Name Class/Type (e.g. Rum, Vodka, Whisky) or Statement of Composition Alcohol Content Statement (percent by volume mandatory, proof optional) Net Contents Bottler’s Name and Address Government Warning If Required: Commodity Statement, Age Statement, Country of Origin

3. TTB: Prohibited Statements 27 CFR § 5.42: Distilled spirits labels shall not contain: False or misleading statements Disparaging statements about competitors Obscene or indecent statements Misleading statements regarding tests, analyses, standards Misleading statements regarding guarantees A false connection with an individual/organization Health-related statements Government seals, flags, insignia Pure, Bond/Bonded (usually)

3. TTB: Health-Related Statements In general, labels and advertisements may not contain “any health- related statement that is untrue in any particular or tends to create a misleading impression as to the effects on health of alcohol consumption” (27 CFR 5.42). Health-Related Statements: Relationship between consumption of the product and health benefits/effect on health. A physical or psychological sensation results from consuming the product. Statements of nutritional value. Specific Health Claim: Relationship of the product to a disease/condition. Health-Related Directional Claim: Refers consumers to third parties/others.

3. TTB: Other Potential Problems Branding conflicts with class/type or character/identity of the product Distilled Spirit Specialties (e.g. Spiced Rum) References to beer or wine Recognized cocktails Geographic misdescription Use of protected terms Drug references (legal and illegal; slang or imagery) Vintage, age or unexplained numbers

4. State and Local Issues TTB and USPTO approval does not necessarily mean states will be okay with your product/labeling Brand/label registration Flying Dog “Raging Bitch” in Michigan Founder’s Breakfast Stout in New Hampshire Moonshine in Tennessee Tradenames/DBAs

5. Don’t Get Sued Trademarks Truth in labelling Clearance searches (TESS, Public COLA Registry) Dispute resolution Other Truth in labelling Handmade, craft and related terms Origin