Wine Not Wine & Trademarks: Submitting Acceptable Trademark Specimens for Wine and Wineries

Like other businesses, wineries care about their brands and use trademark registrations as part of their brand strategies. As you know from reading this blog, trademark applications not only identify a specific mark, but they also identify specific goods and services offered under the mark. Wineries often offer multiple goods and services, including merchandise, food products, wine glasses, event venue services, etc. For the purposes of this post, we will focus on the wine tasting room services and branded wine. In particular, we will discuss the types of specimens wineries might submit to demonstrate use of their marks in connection with these identified goods and services.

Recall, U.S. based trademark applicants (wineries, or otherwise) must show the USPTO that they are using the applied-for-trademark in connection with the goods and/or services identified in the application before the application will register. Said trademark use can occur prior to filing the trademark application (i.e., a use-based application under Section 1(a)) or after the application is filed (i.e., an intent-to-use basis under Section 1(b)). To satisfy the requirement, the applicant, in relevant part, must submit a specimen showing that the trademark is used in connection with the goods/services.

The image below is a copy of the registration issued to Tinte LLC for the mark TINTE CELLARS.

The registration identifies “wine” in International Class 33 and “wine tasting room services” in Class 43. Two different specimens would have likely been required. In particular, the USPTO’s Trademark Manual of Examining Procedure (TMEP) applies different requirements for specimens used for goods versus services.  Several of the specimens to support this registration are provided below.

Specimens for Wine

The Trademark Manual of Examining Procedure identifies several categories of acceptable specimens, including:

·         Labels and Tags

·         Stampings

·         Commercial Packaging

·         Displays Associated with Goods

·         Catalogs

·         Electronic Displays

TMEP § 904.03(a) et seq.

Per Section 904.03(a), “In most cases, if a trademark is ordinarily applied to the goods or the containers for the goods by means of labels, a label affixed to the goods is an acceptable specimen. . . .

Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown.

Although a photograph of the goods bearing the mark on a label or tag attached to the goods is preferred, a label or tag that is not shown physically attached to the goods may be accepted if, in addition to the mark, it includes information that typically appears on a label or tag in use in commerce for the types of goods, such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information sufficient to identify the goods. For example, a shipment of fifty-six (56) cases of wine wrapped for safety might not reveal labels or distinctive markings. However, a photograph of the pallet and cases, along with a photo of a label applied might satisfy the requirement. Consider if the label said “DINOSAUR WINE: 12 cases Cabernet Sauvignon; 12 cases Syrah; 12 cases Zinfandel; 12 cases Pinot Noir; 8 cases Chardonnay; etc.” The e

Note, labels or tags that appear to be a mockup, illustration, or other rendering are unacceptable and will result in refusal for failure to show the mark in actual use in commerce in connection with the goods. The refusal will be under Sections 1 and 45 (15 U.S.C. §§1051, 1127) if submitted before registration, or under Sections 8 or 71 and 45 of the Act (15 U.S.C. §§1058, 1127, 1141k) if submitted after registration.

The image above does not show use of the DINOSAUR WINERY mark in connection with wine. It is simply a mock label that the author created in Canva in a matter of minutes.

Per Section 904.03(b), “[s]tamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation. . . . The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template.”

The image above shows cases of wine stamped with the DINOSAUR WINE mark. Aside from the fact that this image is fictitious, it would likely satisfy the specimen requirement if it was a genuine image of wine cases containing wine.

Per Section 904.03(c), “[t]he terminology ‘applied to the containers for the goods’ means applied to any type of commercial packaging that is normal for the particular goods as they move in trade.  Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen.”

*Photo courtesy of Sebastian Coman Photography and used pursuant to a free license on Pexels.

Assuming that this product is sold in the United States (the photo was taken abroad)—Bollinger Champagne is most certainly sold in the United States—a photo like this would likely satisfy the requirement. It shows use of the mark in several places on the bottle (only one use is required).

The photo shown immediately above was submitted in support of the registration for TINTE CELLARS. It shows use of the mark on the label of the wine bottle.

Per Section 904.03(g), “[a] specimen comprising a display associated with the goods (1) must show use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1). It must bear the trademark prominently; however, it is not necessary that the display be in close proximity to the goods.

Displays associated with the goods comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus, and similar devices that show use of the mark directly associated with the goods.

The image above is fictitious. Assuming it were genuine, it prominently shows the mark DINOSAUR WINE used in connection with the sale of wine. A customer would likely drawn an association between the mark and the wine.

These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.  That is, the display must prominently display the mark in question and associate it with, or relate it to, the goods. The display must be related to the sale of the goods such that an association of the two is inevitable.

Folders, brochures, or other materials that describe goods and their characteristics or serve as advertising literature are not per se “displays.”   In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Indus. Inc., 15 USPQ2d 1671 (TTAB 1990).  In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.  Such evidence must consist of more than an applicant’s statement that copies of the material were distributed at sales presentations or tradeshows.  A mere statement that advertising and promotional materials are used in connection with sales presentations is not sufficient, in and of itself, to transform advertising and promotional materials into displays used in association with the goods. In re Anpath Grp., Inc., 95 USPQ2d 1377 (TTAB 2010).

Displays associated with the goods also exist in an electronic or online environment in the form of web pages. These “electronic displays” perform the same function as traditional displays and must meet the same standards for an acceptable specimen as traditional displays.

Here is an additional screenshot showing use of TINTE CELLARS:

The first two images above prominently show the mark used in the footer of the webpage, as well as on the bottles themselves. The third photo was submitted by the owner of TINTE CELLARS. It displays the mark TINTE CELLARS prominently in the header. Each of these images display wine and action items for ordering wine.

Per Section 904.03(h), “[i]n appropriate cases, catalogs are acceptable as a display associated with the goods. . . . [E]xamining attorneys may accept any catalog or similar specimen as a display associated with the goods, provided that it:  (1)  includes a picture or a sufficient textual description of the relevant goods; (2)  shows the mark in association with the goods; and (3)  includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or email address for placing orders). See 37 C.F.R. §2.56(b)(1).

[T]he inclusion of a phone number, Internet address, and/or mailing address merely as part of corporate contact information on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods.  There must be an offer to accept orders or instructions on how to place an order.”

The analysis for electronic displays is similar to the standard for catalogs. Per Section 904.03(i), an acceptable electronic display should have a point-of-sale attribute and exceed mere advertising.

Specimens for Wine Tasting Room Services

By contrast, “[a] service mark specimen must show the mark as actually used in the sale of the services, which includes use in the performance or rendering of the services, or in the advertising of the services recited in the application. 37 C.F.R. § 2.56(b)(2); TMEP 1301.04.  “Whatever type of specimen is submitted, it must show proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark in the sale of the services, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials.” Examples include:

·         advertisements and other marketing materials

·         photographs of signage

·         webpage and social media screenshots.

The owner of the TINTE CELLARS mark submitted the specimen above (a screenshot from its website) showing the TINTE CELLARS mark used to promote its tasting room services. The screenshot shows the mark used or displayed in advertising the services. Thus, it satisfied the examining attorney.

Wineries have several options for specimens when it comes time to file their application—or statement of use in the case of an intent to use application. Wineries located outside of the United States have even more options. At some point, the winery will need to show that it has used the trademark in connection with the goods and/or services. Knowing what constitutes an acceptable specimen is important to efficient and effective trademark registration.

The TMEP sets forth different rules for specimens that are acceptable in connection with goods (e.g., wine) versus specimens that are acceptable in connection with services (e.g., tasting room services; event venue services).

 It is advisable to visit with an experienced trademark attorney to discuss these options and develop an appropriate strategy. If you would like to discuss a trademark application (or other IP issue) with an experienced trademark attorney, schedule a consultation here.