In earlier articles, I have discussed the benefits of federal registration of trademarks, how they differ from patents and copyrighted materials, and how far you should go to protect your marks. But, when someone decides to take the ultimate step to initiate litigation, I find that they often have little understanding of the process, the timelines, the costs, and the burdens involved. This article is meant to give a high-level view of what a litigation entails, either at the U.S. Patent and Trademark Office or in federal court.
To read the rest of the article on The Grapevine Magazine website, click here.
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By: Judit Monis, Ph.D. and Brian D. Kaider, Esq.
When damage caused by an herbicide is noticed in the vineyard, growers must act quickly to determine the injury's cause. In all instances, damage must be documented with photos. n addition, physical samples must be submitted to a lab to determine which pesticide is the culprit of the injury. Since there are many different possible chemicals that can cause similar symptoms, the grower needs to have some knowledge as to what chemical is suspected as the laboratory needs to perform specific tests to confirm the presence. A common problem is that chemicals can move a long distance, hence not always easy to determine where the drift originated. However, if the grower, knows the origin of the herbicide (saw spraying activity in a nearby farm), s/he could attempt to ask the farmer to follow label directions to avoid drift or to use a less volatile product. If the activity continues in spite of the request, the only viable solution may be to take legal action against the perpetrators.
You’ve secured federal registration for your trademarks and you’ve been building your brand recognition. Per your trademark attorney’s recommendation, you’ve had quarterly searches conducted to find similar marks. Lo and behold, a new entry to the market is using your trademark. Now what? Stop and take a breath; let the initial surprise or anger settle. There is a lot to consider before taking any action.
Take Stock of the Situation
First, take a look at your own trademark. Is it the name of your winery or of one of your products? Is it a national brand or one that is distributed in a small geographic area? In what classes of goods and services is it registered (e.g., class 033 for wine, class 040 for “custom production of wine for others,” etc.)?
Then look at the competitor’s mark. Is the mark identical to yours or similar? How similar? Is it broadly distributed? Is it used for the same goods and services as your mark? If not, how similar are the goods and services? Are your products marketed through the same trade channels? Are consumers likely to encounter both your products and theirs? Have they attempted to register their trademark and, if so, where are they in that process?
When most people think of patents, they think of new machines, new medicines, or improved manufacturing processes. These inventions are protected by “utility patents.” Some people may also be familiar with “design patents,” which protect a novel ornamental design, such as the front grill of a luxury car. But, there is a third class of patents with which most people are unfamiliar, “plant patents.” As the name suggests, plant patents protect new plant varieties, such as a new strain of wine grape vine.
Not all plants are eligible for patent protection, however. United States Code, Title 35, Section 161 provides that: “[w]hoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefore…”
There are some key words in that statute, most importantly, “asexually reproduces.” Asexually propagated plants are not grown from seeds, but by rooting of cuttings, layering, budding, grafting, inarching, etc. Plants capable of sexual reproduction are not excluded from patent eligibility if they are also capable of being reproduced asexually. “Tuber propagated plants” are those that are grown from short, thickened portions of an underground branch, such as the Irish potato or the Jerusalem artichoke. The policy reason for excluding these asexually produced plants is that they are propagated by the same part of the plant that is sold as food.
Having worked in intellectual property for nearly 20 years, I often take for granted that people have a working knowledge of the different types of IP rights. That misconception is frequently revealed when a friend or family member (with whom I’ve had many conversations about IP) asks, “didn’t you patent that company’s logo?” “Well, no,” I explain, “but, I did get it federally registered as a trademark.” Taking a step back, I realize that it can be quite confusing. So, this article is meant to introduce the four main types of intellectual property and how they apply to the wine industry.
Patents Protect Ideas – sort of
Most people have a general understanding that a patent protects an “invention” or an idea. In a very general sense, that’s true. But, even though the Congressional authority to grant patent rights comes directly from the U.S. Constitution (Article 1, Section 8, Clause 8), exactly what is patentable is the subject of tremendous confusion among the U.S. population, examiners at the U.S. Patent and Trademark Office, lawyers, and even judges; sometimes requiring clarification from the U.S. Supreme Court. The purpose behind the grant of a patent is to encourage innovation by granting exclusive rights to one’s discoveries for a limited time. In other words, it gives the patent holder a short-term (20 years from the date of filing) monopoly on his invention. Generally, new machines, chemicals, electronics, methods of production, and in some cases, methods of doing business, are eligible for patent protection
In my mail today, I received the official-looking letter, below. At first glance, it appears to be from the U.S. Patent and Trademark Office and it claims that my registration for the KaiderLaw® trademark is about to expire unless I pay $1,250. The letter is NOT from the USPTO.
Below, I’ve highlighted the address in the top left corner. This is not the address of the USPTO. In fact, it appears to be the address of a Regis office. In the middle of the letter, I’ve highlighted some other information that is incorrect. It claims the filing date was May 21, 2013. The filing date for my mark was actually 2 years later. It claims the registration date was May 3, 2014. Again, it was actually 2 years later. It also claims a “Date in location” of May 3, 2016. There is no such thing as a “date in location.” Then it claims the renewal date is May 3, 2019. It’s not, my renewal period is between May 3, 2021 and May 3, 2022.
Finally, in the small print at the bottom, it says, “Patent and Trademark Office is a private service company within the intellectual property area that reminds companies when their trademarks are due for the renewal. Patent and Trademark Office is non-governmental company and is not connected to any of the governmental organizations.”
If you receive anything that looks like this letter, please contact your trademark attorney right away and do not send any money. If you read the fine print, it suggests that by paying them the fee they are demanding, they will then renew your trademark on your behalf. They may not. Using my letter as an example, the renewal period for my mark does not begin until 2021 and the USPTO will not accept a renewal application before that date.
There are many "companies" out there that will send a letter like this; then when you pay them, they will not file anything and a few years later, the trademark becomes abandoned. By that time, the company has moved to a new location and the "customer" is not only be out the money, but their trademark registration is cancelled.
If you have any questions, feel free to reach out.
One of the take-home messages from the State of the Industry address at this year’s Unified Wine and Grape Symposium was that per capita alcohol consumption is flat. This means that the various sectors of the alcohol industry can only increase sales by re-dividing the pie in their favor. Although wine and spirits are making headway at the expense of beer, new players in the space, such as hard seltzers and pre-mixed cocktails are carving out their own slices.
One of the areas where wine is losing market share is with millennials, who are adopting wine as their drink of choice at a slower pace than prior generations. Winning in this sector, and others, will require strong marketing efforts. But, advertising and promotion in the alcohol industry is a messy affair with wildly contradictory rules in different jurisdictions.
This article surveys the laws in several states, not to provide a complete picture as to allowable advertising practices in the wine industry; that would be impossible, but to highlight some of the issues and how differently they are addressed in different states.
I am thrilled to congratulate my client, Silver Branch Brewing Company, on their official opening today!
I first met Christian Layke almost three years ago, while he was still the head brewer at Gordon Biersch in Rockville, MD. At that first meeting, I knew immediately that this was going to be a very different brewery client. His dreams were huge and anyone else wanting to take on the scale of project he was describing, I would have thought them crazy. Not Christian. He was aiming high, but something told me he could hit his target. Later, when I met his business partner, Brett Robison, who was the General Manager at Republic in Tacoma Park, I was certain. These guys were the real deal.
Together, we worked through several stressful trademark issues, a very thorough operating agreement, and a long lease negotiation. But, that was just the tip of the iceberg of what these guys had to go through to get their doors open. They have been working non-stop and what was a gleam in Christian's eye three years ago is now a reality.
The focus of the brewery is "gemütlichkeit," the German word for the sense of camaraderie, coziness, and a sense of belonging one gets when enjoying time with good friends. They hit that goal right in the bullseye.
3he grand opening is Sunday, March 3, 2019. I encourage everyone to come enjoy this amazing new brewery in Silver Spring at 8401 Colesville Road (right across from the Silver Spring Metro station).
On November 26, 2018, the TTB published in the Federal Register a notice of proposed rulemaking, titled, Modernization of the Labeling and Advertising Regulations for Wine, Distilled Spirits, and Malt Beverages (83 Fed. Reg. 60,609). The purpose of these proposed rules is to “simplify and clarify regulatory standards, incorporate guidance documents and current policy into the regulations, and reduce the regulatory burden on industry members where possible.”
When the federal government wants to change rules Americans are subject to, they must first publish the proposed rules and provide a period of time for the public to comment and make suggestions. The government agency is required to review and consider all suggestions before implementing a final rule.
This process is not a formality. TTB wants the rules to adequately protect the public while being as fair and unobtrusive as possible to industry members. It is actively seeking comment on many issues in this notice. As members of the industry affected by these rules, winery owners would be well-advised to review TTB’s proposals and provide feedback before the March 26, 2019 deadline.
This article is meant to introduce some of the key issues with which TTB is grappling.
You’ve been in business for several years and have a dozen hard-working, dedicated employees working for your company, or so you think. Out of the blue, a new competitor enters the market and the next thing you know, all 12 of your employees have jumped ship to join the new firm. With them, they have taken company records and customer lists. What do you do? Do you have any legal recourse against the poaching company? Against your former employees? How could you have prevented this?
Can a Competitor “Poach” Your Employees?
In most states, yes. Many people are surprised to learn that, generally, poaching is a perfectly valid and legal way to find new employees. There are exceptions and limitations, of course...
Experienced litigation, patent, and trademark attorney