Wine Not Wine & Trademarks: Identifying Goods and Services for Trademark Applications for Wineries

When preparing a trademark application, an applicant is required to provide information and submit supporting materials. The requested information includes ownership information, the mark, and the goods or services. Properly identifying the goods or services is essential.

There are some aspects of an application that the USPTO allows applicants to amend. Often, an applicant is stuck with the goods or services identified at filing. At most, an examiner might allow an applicant to narrow the identified goods or services. For example, an applicant can amend from “alcoholic beverages” to “wine” or from “wine” to “wine made from Pinot Noir grapes.” The opposite amendments are not allowed because they broaden the scope of the identified goods. Properly identifying the goods or services also impacts the cost of the application. Goods and services fall into one of forty-five classes. The USPTO charges a fee on a per-mark-per-class basis.

This blog post is intended to help wineries and other wine businesses properly identify their goods and services.

1. Goods and Services, Generally:

When you file a trademark application, you are required to identify one or more goods or services offered in connection with the applied-for-trademark. The graphic below shows U.S. Trademark Registration No. 6,824,171 for the mark MIXTAPE used to identify:

Wine; Wine coolers being drinks; Wine punch; Wine punches; Wine spritzers; Acanthopanax wine (Ogapiju); Aperitifs with a wine base; Black raspberry wine (Bokbunjaju); Cooking wine; Fruit wine; Grape wine; Honey wine; Kits for making wine; Mulled wine; Prepared wine cocktails; Red wine; Rose wine; Sparkling fruit wine; Sparkling grape wine; Still wine; Strawberry wine; White wine.

Before the mark registered, the owner, Tyler Bell, was required to submit proof (i.e., a specimen) showing the mark used in connection with at least one of the goods identified in Class 33.

Bell submitted the following photograph showing two bottles of wine that prominently display the MIXTAPE mark used in connection with wine.

The USPTO does not require applicants to submit proof that the mark is used in connection with each of the identified goods. Rather, the applicant must submit proof that the mark is used in connection with at least one good/service from each identified class. That said, the applicant must use the mark in connection with all of the goods and services identified even though it is not required to prove it. An upcoming post will discuss acceptable specimens in much greater detail.

2. Goods: The Core of Winery Trademarks:

In most cases, the primary goods for a winery’s trademark applications are the wines themselves. Applicants might limit their identification to “wine” but may also identify more specific types of wine (e.g., sparkling wine, red wine; merlot; etc.).

Given the use of geographic indications (i.e., a name or sign used on products that corresponds to a specific geographical location or origin) with wines, it is important to use the generic term for the goods rather than a geographic indication (unless you have the right to do so).

For example, it would be improper for a Kansas-based winery to identify its sparkling wine (which uses Kansas grapes) as “champagne” because the champagne beverage is a sparkling wine of French origin protected by the appellation of origin Champagne. Instead, the Kansas-based winery should identify “sparkling wine.”

3. Services: Beyond the Bottle:

Wineries often offer goods and services other than wine. In terms of goods, wineries often sell textiles (e.g., linen towels), apparel, wine keys, candles, glassware, lavender, etc. Services often include wine tourism services, educational workshops, wine club memberships, catering services, and event hosting.

Be aware that the identified goods and services must be offered under the applied-for-mark. For the hypothetical trademark DINOSAUR WINERY, most, if not all, of the services, are probably offered under the mark DINOSAUR WINERY if that mark appears prominently across signage and promotional materials. That might not be the case for the various goods.

Consider the following facts. A visitor walks into the tasting room of the DINOSAUR WINERY and the mark DINOSAUR WINERY only appears on the signage, the wine bottles, and the glassware that the visitor ultimately purchases. The name does not appear on the wine keys, candles, and lavender. Instead, the winery purchased the wine keys from wine.com (and are labeled with wine.com). Likewise, the name does not appear on the candles and lavender, either. Instead, the winery helps the lavender farm next door—BIG TIME LAVENDER—sell its BIG TIME LAVENDER branded candles and lavender.

Under these facts, Dinosaur Winery could identify wine and glassware. It could not identify wine keys, lavender, or candles. However, it could identify the other goods if it added DINOSAUR WINERY prominently to those products in such a way that a consumer might believe that the products originated from the winery.

Identifying the non-wine goods and services may be of secondary concern to your winery but they might afford more robust protection. Keep in mind that identifying goods/services in multiple classes will increase the cost of registration and maintenance. You should consult with trademark counsel to consider the cost-benefit analysis.

4. Navigating Classification and Descriptions:

Accurately classifying and describing your goods and services is important. The USPTO’s Trademark ID Manual is helpful. You can access it here. The Manual returns nine pages of results when searching for “wine.” A screenshot is provided below.

Although most wineries do not sell “oenological bactericides used in winemaking” or “chemicals for fermenting wine,” there are other goods and services that might be more commonplace or relevant to you (e.g., “Cutters for wine bottle foil, hand-operated”; “Mats of card for wine glasses”; etc.).

Please note that the identifications can be deceiving. Although wineries, by their nature, manufacture wine, it is less common for wineries to manufacture wine on behalf of others. With that in mind, it is often inappropriate for wineries to identify their services as “winemaking.”

Given the complexities of trademark law, consulting with an attorney specializing in trademark law and specifically familiar with the wine industry is invaluable. Your attorney can help accurately identify and describe your goods and services, ensuring a stronger trademark application.

Conclusion:

Effectively identifying goods and services for trademark applications is an important step for wineries in safeguarding their brand and products. By covering all aspects of their offerings—from the wine itself to the full range of goods and services—wineries can ensure comprehensive brand protection and market recognition.

If you would like to discuss your winery’s trademarks (or other IP) with an experienced trademark attorney, schedule a consultation here.