trademarks-beverage

About five to ten times per year, we get a call from a client asking why the USPTO sent them an invoice for hundreds of dollars for their trademark applications. After a few minutes, it becomes clear what they are talking about—trademark spam.

Trademark spam? Trademark spam is an unavoidable and unfortunate result of the information an applicant provides the USPTO in an application, which is publically available. This includes, among other information, the name, address, and email of the party applying for the mark. As a result, spammers have all of the information they need to send fake trademark solicitations that appear to be legitimate. The USPTO is fully aware of trademark spam, but despite its efforts, applicants and registrants continue to be victimized by spammers.

What does trademark spam look like? Trademark spam generally comes in the form of official-looking correspondence—letters or email—that either “requires” the recipient to pay certain fees, or strongly “recommends” that the recipient use a particular company to facilitate the trademark registration process. In the first instance, some fees are completely fabricated, while other fees purport to be real fees, but are grossly inflated by the spammer. Here is a list of the actual USPTO trademark fees and their correct amounts. In the second instance, spammers offer their services to...

We have been following various cocktail controversies in recent months, and we again thought of this one today because it appears that it got settled in recent days. Regardless of the exact, current, status, the main point remains — it really is possible to get into a full-blown trademark dispute over cocktail names, as this situation shows.

This tempest in a mug is all about … What do you need to make a real Dark ‘N Stormy®? According to Gosling Brothers Ltd.—the owner of several registered trademarks over DARK ‘N STORMY—any brand of ginger beer will do, but you better use Gosling’s Black Seal® Rum. Those planning to do otherwise may want to garnish their cocktail with a large wedge of trademark-infringement-defense.

By Frank Knizner, J.D. and Michael Volz, Attorney

A Dark ‘N Stormy®, like a Painkiller®, or a Sazerac™, is one of a handful of trademarked cocktails. On September 15, 2015, Gosling sued Pernod Ricard USA, LLC alleging that Pernod’s use of “Dark N’ Stormy” and “Black Stormy” in recipes and advertising containing Pernod’s Malibu line of rums infringed several of Gosling’s DARK ‘N STORMY registered trademarks. The case—Gosling Brothers Ltd. et. al. v. Pernod Ricard USA, LLC.—was filed in federal district court in Massachusetts.

The alleged trademark infringement stemmed from Pernod...

On October 19, 2015, Jim Beam filed a Notice of Opposition at the United State Patent and Trademark Office (PTO) Trademark Trial and Appeal Board against Brown-Forman’s pending trademark application for WOODFORD RESERVE DOUBLE OAKED in connection with “Alcoholic beverages except beers.” In the Notice, Beam alleges that the phrase “Double Oaked” is either generic or merely descriptive and, accordingly, that the WOODFORD RESERVE DOUBLE OAKED mark should not be allowed to register without a disclaimer of that phrase.

Notice:  a longer version of this article first appeared in Modern Distillery Age.

Forman applied for registration of WOODFORD RESERVE DOUBLE OAKED back in November 2014. The examining attorney reviewing the application required Forman to disclaim the word “Reserve,” but not the phrase “Double Oaked.” Forman complied, and in late April, the PTO published the application for opposition by third parties. Enter Beam, filing an opposition, arguing that “[Beam] and third parties will be damaged by the registration of [the] [m]ark without a disclaimer of “Double Oaked.”

Specifically, Beam alleges that “Double Oaked” is a generic term “for the process of aging alcoholic beverages in a second oak barrel.” The phrase, Beam continues, is “incapable of distinguishing [Forman]’s alcoholic beverages from those produced and sold by others because its primary significance is to name a type...