IBA, as the premier business brokerage firm in the Pacific Northwest, is firmly established as a respected professional service firm in the legal, accounting, banking, mergers & acquisitions, real estate, and financial planning communities. Periodically, we will post guest blogs from professionals with knowledge to share for the good of owners of privately held companies & family owned businesses. The following blog has been provided by Robert Salier of the Pacific Northwest Law Group (www.pnwlg.com):
Build Value in Your Winery Business
Wine growers have many important assets. They have the plants, the grapes, the bottle design, their methods of production, the production facilities, the artfully designed label, and more. While it might surprise some, one of the most important assets of a wine company is the brand itself. Your brand is your ticket to premium revenue from your wine growing investment. As such, it is important that you do everything you can to protect your brand.
A brand can be protected by registering your wine label or labels. A registration with the TTB is not a trademark! And a trademark is not a trade name registered with the State. Wine growers and wineries are eligible for a federal trademark if their wine market crosses state lines (e.g., interstate shipments, a tasting room, mailing list, or website selling). A federal registration, with a prior first date of use, will trump a state registration.
In addition, to register for a federal trademark the brand must qualify as within the spectrum of distinctiveness with the United States Patent and Trademark Office (“USPTO”). A generic or descriptive term (e.g., “Good Cheap Red”) is not protectable as a trademark. Conversely, a fanciful or arbitrary term would be considered distinctive (e.g., Zefina®), and could be protected as a trademark, assuming that it is not in conflict with a pre-existing mark. Marks that are too similar to an existing mark may be considered confusingly similar and thus be barred from registration. If a brand primarily consists of descriptive terms (i.e. geographic as “Chelan” and “Woodinville,” surname, commonly known industrial term) then you can assume it will not be accepted as a registerable trademark. Sometimes adding a second word or term to the brand name can overcome the problem (ex. adding vineyards, cellars, winery, etc.).
If your brand includes a growing region (AVA), and your grapes are not specifically grown in that region, you can expect problems with the Alcohol and Tobacco Tax and Trade Bureau (“TTB”). The TTB has specific requirements related to when growing regions may be included on wine labels.
When deciding how to brand your wine, there are some steps you can take to avoid potential trademark problems. First, do a search on your own of the USPTO website (uspto.gov). They have a free online trademark database on which you may research the brand name you are considering adopting as your own. You can also search the TTB. If you enter your proposed brand name in their “Products” field, you will be able to review brands that have been filed with the TTB. It is also worthwhile to do a basic Internet search. Search your proposed brand name with wine suffixes included to narrow the search. If you do not find overly similar names during these searches, you should move forward with trademark registration.
If you have not begun selling wine under your brand name, you can file an application with the USPTO for an “Intent to Use” application. If your Intent to Use application is approved, you will have three years in which to start actual sale of your wine and to produce evidence of use to the USPTO.
If you have questions about protecting your wine brand, or any other legal questions relating to your wine business, contact Bob Sailer at (425) 867-0512 or Bob@pnwlg.com for additional information and assistance. The Pacific Northwest Law Group can guide you through the trademark registration process, and ensure that one of your company’s most valuable assets is protected.