1. Copyright © 2010 by K&L Gates LLP. All rights reserved. Lessons from the Beverage Alcohol Trademark Wars Andrew Reibman

2. Copyright © 2010 by K&L Gates LLP. All rights reserved.

3. 5 Minute Trademark Law Primer 2

4. Trademarks are Indicia of Source Word: Budweiser Phrase: It’s Miller Time Stylized Words:Words with Design: Design or Logo: 3

5. Key Elements of a Protectable Trademark  Indicia of source  Distinctiveness  Priority  Technical trademark use … bona fide use as a trademark … in the ordinary course of trade... on goods or their containers (with exceptions) … in interstate commerce in the United States 4

6. In the United States, Rights Arise from Use  Prior use generally defeats later registration  Greater scope of use leads to greater rights  Common law rights may arise from use even without registration  “Intent to use” application, allows placeholder in time to be perfected when use begins 5

7. Likelihood of Confusion -- The Dupont Factors  Similarity of the marks  Relatedness of the goods or services  Similarity of trade channels  Conditions of purchase and sophistication of buyers  Number and nature of similar marks in use on similar goods (strength of mark) 6

8. Some Benefits of Federal Registration  Prima facie evidence of ownership and use  Possibility of attorneys’ fees and greater damages in infringement actions  Blocks registration of confusingly similar marks  Allows customs service blocking of importation of infringing goods  Incontestability after five years on principal register  Notice/warning to others 7

9. Recent Trademark Law Developments Told (mostly) Through Recent Beverage Alcohol Trademark Cases 8

10. Likelihood of Confusion Issues 9

11. Likelihood of Confusion Applied for:Existing Registration: In re S.A. Establecimientos Vitivinicolas Escorihuela, 2008 WL 4354166 (Trademark Tr. & App. Bd.) 10

12. Held: Confusingly Similar  Same goods: Both for wine  Similarity of mark: Average purchaser will recollect “Don Miguel”  “Don Miguel” more prominent than design features  Practice note: Burdens of proof are less for an opposer than for someone enforcing against an infringer 11

13. Likelihood of Confusion In re Taylor Wines Pty Ltd., 2008 WL 5078735 (Trademark Tr. & App. Bd.) 12

14. Held: Confusingly Similar  Goods: “Wine” encompasses “Red & White Still Wines”  Similarities of the mark: Consider marks in their entirety. Less weight to generic or descriptive portion. More weight to word, when combined with design. “St. Andrew’s” is the dominant portion of both marks.  Strength of marks: Discount existing St. Andrew’s marks, because they are for whiskey 13

15. Likelihood of Confusion: Foreign Equivalents LUZ DE ESTRELLA In re Armstrong Vineyards and Winery,2008 WL 78849329 (Trademark Tr. & App. Bd.) STARLITE VINEYARDS 14

16. Result: Confusing  When it is likely that the ordinary American purchaser would stop and translate the term, must consider translation  Significant portion of the consuming public is knowledgeable in Spanish 15

17. Likelihood of Confusion: Foreign But Different? QUINTA DO PORTAL for “wine” In re Sociedade Quinta do portal, SA, 2008 WL 2619526 (Trademark Tr. & App. Bd.) Result: Confusing - virtually indistinguishable to average, English speaking consumers QUINTA DO PORTA for “port wine” 16

18. Likelihood of Confusion: Alcoholic Beverages Related? Bell’s BreweryBELL HILL for “packaged wine” Bell’s Brewery v. Bell Hill Vineyards, LLC, 2009 WL 5118319 (Trademark Tr. & App Bd.) for “beer, including porter, ale, stout, and malt liquor” 17

19. Result: Not Confusing  Channels of commerce and consumers related  However, Opposer failed to establish that it is a common practice for beer and wine to be distributed under the same mark. Practice Tip: Result probably depended on factual presentation – establishing the story and factual predicates is important. 18

20. Likelihood of Confusion: Relationship of Alcoholic Beverages In re White Rock Distilleries, 2009 WL 4081675 (Trademark Tr. & App. Bd.) 19 for “energy vodka infused with caffeine” for “sparkling fruit wine; sparkling grape wine; sparkling wine; wines”

21. Result: Not Confusing  Wine and vodka could be sold from the same source, and wine grapes can be used to make vodka  However, there is no per se rule that all alcoholic beverages are related, and it was not established that applicant’s vodka, and registrant’s wine would be considered to emanate from the same mark, or are otherwise related

22. Likelihood of Confusion: Relationship of Alcoholic Beverages In re Nagy, 2009 WL 4086572 (Trademark Tr. & App. Bd.) 21 for “distilled spirits, namely vodka” for “sake” for: “wine”

23. Result: Confusing  Although there is no per se rule that all alcoholic beverages are related, here the examining attorney noted eleven use-based third party registrations in which vodka, wine and sake are all included in the identifications of goods, as well as evidence of products such as wine flavored vodka, vodka distilled from wine, and vodka blended with sake

24. Likelihood of Confusion: Relationship of Alcoholic Beverages with Restaurant Services for “wine” 23 In re Wente Bros dba Tamas Estates, 2009 WL 4085608 (Trademark Tr. & App. Bd.) for “restaurant services”

25. Result: No Likelihood of Confusion  “Something more” than just a restaurant and wine with similar name is required  Winery has a restaurant at vineyard  Restaurant has a picture of a bottle of wine in ad Not enough!  Dicta: Related type of food or beverage (e.g., Mexican) might be enough. Alternative might be restaurant sells specific wine type. 24

26. Relationship with Other Types of Goods Existing Mark: BUDWEISER New Mark: BUTTWIPER 25 Anheuser-Busch v. VIP Products, 2008 WL 4619702 (E.D. Mo)

27. Result: Preliminary Injunction Granted (subsequently settled)  Survey showed actual confusion amongst 1 in 3 people  Benefit given to famous mark 26

28. Likelihood of Confusions – High and Low End Goods Existing Mark: For “wine”, but it’s $8 wine…. Applicant’s Mark: For “wine”, but it’s $125-180 wine In re William Cole Vineyards, LLC, 2008 WL 5078726 (Trademark Tr. & App. Bd.) WILLIAM COLE VINEYARDS WILLIAM COLE 27

29. Result: Confusion Still Likely  Applicant argued channels of trade are different, because shelf would never be the same, or even in the same retail location  However, in oppositions, registrations are not limited based on current use  Think about: what if the registration was for “cheap jug wine” 28

30. Functionality and Product Design 29

31. Functionality – Some Background  If packaging is functional, the design or packaging cannot serve as a trademark. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995); 15 U.S.C. § 1052(e)(5)  When “packaging of a product” comprising trade dress also satisfies the federal standards of trademark protection, registration is allowed on the principal register  Supreme Court has characterized trade dress as the “design or packaging of a product” which has acquired a “secondary meaning” sufficient “to identify the product with its manufacturer or source.” TrafFix Devices, Inc. v. Mktg Displays, Inc., 532 U.S. 23, 28 (2001) 30

32. Makers Mark v. Diageo North America 2008 WL 4165456 (W.D. KY.) D’s motion for summary judgment that Maker’s Mark wax seal is functional and generic denied; case continues… 31

33. Geographic Marks

34. Geographic Indication Must be Proper 15 U.S.C. §§ 1052 No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it– (a) Consists of or comprises... deceptive... matter;… or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996]....

35. Geographic Descriptiveness 15 U.S.C. §§ 1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it– … (e) Consists of a mark which... (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 4, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them....

36. Is it geographically misdescriptive? Mark: Moskovskaya But not from Moscow In re Spirits International, 563 F.3d 1347 (2009)

37. Holding: remanded TTAB improperly applied materiality test of Section 2(e)(3) Board failed to consider whether a substantial portion of all relevant consumers (not just Russian speakers) is likely to be deceived.

38. Famous Foreign Marks 37

39. Famous Foreign Marks in the U.S. Do famous foreign marks acquire any rights in the U.S. without use or registration? 38

40. Famous Foreign Marks Grupo Gigante v. Dallo, 391 F.3d 1088 (9 th Cir. 2004)  Famous Mexican grocery chain, but no U.S. use  Plaintiff may be allowed to pursue infringement claim based on its famous mark in Mexico  Required “a substantial portion of the consuming public” is familiar with the foreign mark. 39

41. Famous Foreign Marks – Bukhara Grill ITC Ltd v Punchgini, Inc., 482 F3d 135 (2nd Cir. 2007) 40

43. Result:  No federally protected rights for foreign famous marks  Certified to NYCA for state law claims – which were found to exist, but are quite limited.

44. Result: Well-Known (Famous) Marks in the EU Budejovicky Budvar Narodni Podnik v. Anheuser Busch Inc., 2009 EWCA Civ 1022 43

45. Fraud: Shifting, Lower Standards 44

46. In re Bose Corporation, 91 USPQ2d 1938 (Fed. Cir. 2009)  Bose’s registration covered audio tape recorders, in addition to other goods.  Bose acknowledged that it stopped manufacturing and selling audio tape recorders and players in 1996- 97.  Subsequently filed renewal with statement of use including these goods.  TTAB held statement was false and not reasonable. 45

47. Bose Holding on Appeal:  TTAB’s Medinol’s Should Have Known standard overturned  The Board, "[b]y equating 'should have known' with a subjective intent," had "erroneously lowered the fraud standard to a simple negligence standard."  "[u]nless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim." 46

48. Fraud on the Trademark Office Willful Intent To Deceive Reckless Disregard (or Willful Blindness?) Gross Negligence (not enough under Bose) Negligence/Should Have Known (old Medinol Standard – overturned in Bose) Inadvertence 47

49. Practice Tips

50. Some Practice Tips Search and clear before launch. Seek benefits of Federal Registration even for ancillary marks and design features. Contested cases are fact intensive – create a good story and be careful with those emails!

51. Questions & Follow-up Andrew Reibman andrew.reibman@klgates.com (212) 536-4074 (direct)