1. Spirits Branding in 2016 and Beyond
John Messinger Daniel Christopherson

2. 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

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

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

5. 2. USPTO: Grounds for Refusal
Immoral or scandalous – TMEP
Deceptive – TMEP (b)
Disparaging or False connection – TMEP
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

6. 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

7. 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

8. 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

9. 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)

10. 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.

11. 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

12. 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

13. 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