Napa, Calif.—Establishing trademark and copyright protection does not require government registration, but maintaining these elements of intellectual property demands vigilance.

The second session at The Seminar Group’s “IP Issues in the Food and Beverage Industries” on Oct. 16 and 17 focused on these two pillars of the four IP elements. (Read our first report about the event here.) 

Create a copyright
Contrary to popular belief, it’s not necessary to register a copyright in the United States, said Genevieve S. Burch, associate general counsel at Winery Exchange. A registered copyright is required, though, in order to file a lawsuit for copyright violation, she said.

Intended to promote the useful arts, copyright protection extends to original works of authorship: literary, audio/visual, architecture, choreography and pictorial. In the food and beverage industry copyrights cover artwork on labels and packaging, photographs, original music, books and both content and source coding of webpages.

Copyright protection gives the original producer exclusive rights to reproduce the work, prepare derivative works, distribute copies, display or perform the work in public and perform sound recordings in public.

Copyright does not extend to ideas, principles or discoveries; names or titles; data; procedures, processes (recipes) or systems; short phrases or slogans; familiar symbols; mere variations of typography or ornamentation; listings of contents or ingredients, or “works created by nature or animals.” So, don’t let the winery dog design the labels.

In a business environment, the actual creative author is the default owner of any copyrighted material. Employers must arrange to have works assigned to them in writing. This applies to “works for hire,” defined as: 1) Work prepared by an employee within the scope of employment or 2) Work especially ordered or commissioned, including collective work on a motion picture or audio/visual; translation; supplementary work; compilation or instruction text, test or answer material.

The California Labor Code 3351.5 specifies that “work for hire” is produced by an employee whose employment triggers unemployment insurance.

Making a trademark
Robert B. Burlingame, counsel with Pillsbury Winthrop Shaw Pittman LLP and program co-chair, zeroed in on the significance of trademarks. As with copyrights, registration is not required. “Rights to a trademark come by use or registration,” he said.

Trademarks apply to words, names, symbols, devices or a combination of these that identify and distinguish goods and indicate the source. Consumer protection is the goal. In theory, the trademark “guarantees a level of quality.”

Company or fictitious business names; products or services may be covered by trademarks. “Trade dress,” the design of the product or packaging, may also be trademarked if it is distinctive or nonfunctional.

Registering a trademark can be costly and time consuming, requiring expert assistance. Burlingame outlined the required steps.

• Clear your mark: Search databases to ensure no one else is using the name or brand you propose.

• Apply to register with the U.S. Patent & Trademark Office

• Use your mark and protect it by policing potential rivals.

Don’t dilute it
In choosing a brand to trademark, try to avoid the likelihood of confusion with similar names. Trademark “dilution” can occur between owners of famous marks and others. Common names, for instance, are more likely to be confused with others.

Dilution of a trademark can tarnish your brand and dilute it by blurring your message.

An audience member noted that U.S. trademark law changed in 1996. “Local fame,” for instance, is more loosely defined, and actual dilution of the brand value is more difficult to prove.

Trademark strength and distinctiveness are defined on an increasingly enforceable spectrum:

• Generic, e.g. “Ribs.”
• Descriptive, e.g. “Smoky/Sweet.” When used for 5 years, a descriptive trademark can be viewed as “presumptive.”
• Suggestive, e.g. “Lip smacking.”
• Coined/Arbitrary, e.g. “Sidekick.” These are also known (especially to the TTB) as “fanciful” names.

An audience member (and attorney) commented that generic or descriptive trademarks, the weakest in the hierarchy, could be strengthened with the addition of “below the line” names such as “honey-baked” or “best buy.”

As Wines & Vines reported in 2013, wine trademarks frequently replicate or echo existing brands. To maximize trademark strengths and registerability when using a family name:

• Combine your surname with distinctive words and/or design. Just a surname is “below the line,” i.e., generic.
• Use a full first name or initials
• Combine with another surname, e.g. Kendall-Jackson.

Geographic terms often create trademark overlap. Do the terms used describe—or mis-describe–your location? Are consumers likely to believe that your wine comes from that specific place, for instance “Green Valley?”

Wineries are advised to avoid names similar to other brands or AVA designations. Again, combine the name with distinctive words and/or design to maximize registerability.

Protection will serve
When questions of eligibility or law arise, courts will look at priority: Who was first to use the terms in question? Many times, it’s first come, first preserved.

Legal decisions may hinge upon the strength of the allegedly infringed trademark: How common is it? Other factors include:

• Similarity of marks (sight, sound and meaning)
• Relatedness of goods or services (e.g. Trek Wines vs. Trek Bicycles)
• Overlap in marketing channels
• Overlap in target consumer groups
Degree of care exercised by consumers in purchasing the products (more care is ascribed to high-ticket goods)
• Possibility that senior or junior user of the trademark will expand to compete
• Evidence of actual confusion among consumers
• Junior user’s intent in selecting its mark. (Is it meant to be deceptive?)

To begin researching a potential trademark, consider your market: International trademarks involve country-by-country searches. Burlingame recommended starting with a “knock-out search” of, for instance, TTB records.

Follow this with a full search, which will consider common law, sound-alikes, etc. Burlingame cautioned that, despite some online services that advertise full searches starting at $100, a true full search will cost around $700.

Analyze search results, considering similar trademarks in related fields (Can Duckhorn Vineyards co-exist with Wild Turkey whisky?) Look for similar marks in related fields.

“There are so many similar marks that even small differences are sufficient to co-exist,” Burlingame noted. Earlier established trademarks may have been cancelled or abandoned recently.

Use your mark: Trademark rights arise immediately upon the mark’s use in commerce. But, without registration, rights are limited to the geographic area where the goods are sold. Proving trademarks in a judicial setting is a costly proposition.

A registered trademark can impact the value of intellectual property in your business portfolio, increasing your financial power. Use the trademark symbol or “registered” symbol when you can (but don’t expect media to include this in editorial material).

Trademarks endure as long as they remain in commercial use, so, Burlingame stressed, “Use it or lose it.”

Another financial aspect of trademarks is the owner’s right to license it, i.e., grant another party the right to use your mark. Licensing can be a part of a larger, non-IP project agreement, or it could involve a royalty fee. But beware of franchise implications: If you try to control how a licensee runs its business, “You’re getting into franchise territory.”

Licenses can be used to resolve conflicts between potential competitors, but beware of the “naked license.” The trademark owner (licensor) must take care to exercise quality control; parties should include quality control provisions and follow through with them.

“Use caution with licenses,” Burlingame warned. Your licensee reflects on you, so avoid perpetual licenses.

Why register a trademark? It gives notice to others, gives you nationwide rights and gives presumption of ownership and validity. It allows you to use the TM and registered symbols on labels and promotion material.

Trademark registration lasts 10 years with a maintenance filing in five to six years; words or designs (including specific colors) may be trademarked.

You may think your business is protected, but merely obtaining an online domain name, incorporating or registering a business within your state does not grant trademark protection.

Registered or not, the bottom line is according to Burlingame: “You can’t sit on your rights.”