legally interesting/controversial

I am pleased to share a guest post, from Paul Jorgensen. Paul is an attorney in Washington, D.C.

For readers thinking of registering a surname as a trademark for their beverage, please consider a recent case by the judicial branch of the U.S. Patent and Trademark Office (PTO), the Trademark Trial and Appeal Board (TTAB). According to In re Hall Wines, Serial No. 78926151 (February 10, 2009), anything that looks like a surname in your mark must be, above all, unique. The PTO usually refuses marks that are surnames, reasoning that if the PTO grants registration to that name, others may be unfairly stopped from using their name on their business, products or services. Since distillers and wineries often think of branding their products with family names, famous names, or names of well-known craftsmen, the resulting marks are frequently refused. So distillers and wineries should have a clear understanding of how the PTO will review their proposed mark. If the PTO thinks your application contains a surname, they will put the proposed mark through four tests, often referred to as Benthin factors after a case with the same name (In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995)):

1. How rare is the surname? The PTO will research this or...

We wrote about President Obama’s appearance, on a beer label, many weeks ago. So we were going to leave the above label alone. But the Hennessy label has received surprisingly little press attention, and a reader reminded us about it. The Hennessy label provides a vivid illustration of where the line is drawn, in the matter of Obama-alcohol-beverage-labeling, and how to do it right and wrong. Hennessy got it right, apparently, by avoiding any direct reference to Mr. Obama (by way of name or likeness). They went right up to the line but did not cross it. By contrast, as to the beer, Jill Jaracz wrote in to say:

Amid all the hoopla over the Presidential Inauguration, the TTB has officially nixed the idea of putting President Obama’s name and likeness on beverage labels by denying Ommegang Brewery’s application for a single-batch ale called Obamagang that they planned to release around Inauguration Day. TTB denied this label because they do not allow commercial use of someone’s name or likeness without that person’s permission. In order to comply with the law, the Cooperstown, NY-based Ommegang chose to rename their product Ale 2009, and the new approved keg label depicts that the beer was created in honor of the Inauguration. However, Ommegang’s website still flaunts the ruling...

We never thought we’d see a TTB controversy make it into a big ad in the national media — let alone a full page ad in Time Magazine. The yellow ad is on page 69 of the December 29, 2008 “Person of the Year” double issue and it covers the entire page. The French Office of Champagne is not at all pleased that some non-French wines qualify to be called Champagne, under US law. The ad says “Masquerading as Champagne … isn’t fair. … A legal loophole allows” some names to be misused. In 2006, after many years of negotiations between the US and the European Union, and agreement, TTB set forth the current US rule in TTB Industry Circular 2006-1:

the U.S. made a commitment to seek to change the legal status of [terms like Champagne] to restrict their use solely to wines originating in the applicable EU member state, with certain exceptions. Because the IRC specifically defines semi-generic names, this law must be changed in order to restrict the usage of the names to wines originating in the EU. Assuming the law is so changed, the Agreement contains an exception to this rule. We refer to this exception as the “grandfather” provision. Under the “grandfather” provision, any person or his or her successor...