This blog article is the second in a series called “Wine Law Trademark Series” which aims to help industry members understand general trademark concepts.
Why should a winery consider a trademark clearance search?
Before registering a mark with the U.S.P.T.O., wineries and wine industry members should consider conducting a trademark clearance search. While certainly not required before submitting an application to the U.S.P.T.O., a clearance search can help wine industry members understand potential infringement liability if the mark or a similar mark is registered. A clearance search can be completed by the owner of the mark, but it is generally best to work with a trademark attorney in the wine industry who has experience running clearance searches and may also have access to non-public databases.
Clearance searches are helpful because, while a mark may fall on the higher end of the distinctiveness and protectability spectrum, such does not guarantee registration nor does it make the mark immune from potential infringement claims. Even if the mark is fanciful or arbitrary, it could still infringe upon another company’s mark. The applicant may not find out about the potential infringement until months after the trademark application has been submitted and reviewed by the Examining Attorney or until the mark is published on the The Official Gazette and seen by a third party. Of course, this is well after the applicant has invested time submitting the registration, filing fees, and possibly even attorney fees. A comprehensive trademark clearance search can help find potentially controversial marks well before the registration process begins. For these reasons, wine industry members should consider working with counsel to obtain a clearance search of marks they are interested in registering.
What does a trademark clearance search include?
While the search will depend on the mark, its proposed international class, as well as the conductor of the search, the clearance search should at least consist of a review of the U.S.P.T.O. database for identical or nearly identical marks. This can help determine if there are any very obvious obstacles from the outset. One of the benefits of working with a trademark attorney is that the attorney may have access to commercial databases that pull many of the U.S.P.T.O. registrations and will allow the attorney to search using various algorithms. Sometimes, commercial databases also have access to more than just the federal (and state) trademark databases. For example, the platform Corsearch allows the enduser to review databases including international trademark registrations (which can be narrowed down by country or region).
Even though the above step may be taken in a clearance search, such screenings may not be comprehensive as they may not reveal potentially conflicting marks that are based on common law rights which may not have obtained U.S.P.T.O. registration. Thus it is important that a comprehensive clearance search review more than just the trademark databases. For example, it may be worthwhile to review the COLA database to determine if there are prior label approvals for a particular mark or word or even Google. While the issuance of a COLA by TTB does not guarantee or constitute trademark protection, it could still indicate common law right to a particular name or mark.
When I conduct a trademark clearance search for one of my wine clients, I review relevant databases that may provide specific results to the type of product I am reviewing. For example, my clearance searches will include a review of the TTB COLA database if the search is for a good or service related to alcohol beverages. Further, I look to additional databases that may be populated by industry members or consumer input. I also look to databases that aggregate beer or distilled spirits, even if the good or service is wine, because the U.S.P.T.O. has found likelihood of confusion for beer and spirits marks as well.
For more information on wine or alcohol law, trademark law, or clearance searches please contact Lindsey Zahn.
DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.