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More ARTAL

I was fully prepared to do a whole bunch of client work on this quiet day after Easter, but then Jaycee showed me a new Industry Circular. It is 2018-2, entitled Expansion of Allowable Changes to Approved Alcohol Beverage Labels. It adds some interesting new allowances, beyond the many set out here and here and here, etc. At first, the Circular looked pretty text-y and so it was hard to gauge the significance. To make it more visual, I prepared the above. It is easier to comprehend if you click on it, to expand it into its full glory (with all due apologies to Four Roses for monkeying with their back label). TTB seems to be on a roll, to expand the allowable revisions. It is quite a departure from the agency of a decade or two ago, not especially enamored of such changes. I wonder to what extent these allowable revisions are having a marked impact on the number of labels submitted.

To understand the image, the green lines show allowable revisions, and the red lines show revisions that would not be allowable without a new COLA. The lines go in order and roughly correspond to the order in the Circular:

    1. I made the label a bit bigger to accommodate the new text, and this line is just showing it’s ok to change the shape and size of an approved label, based on an earlier announcement (item 3, here).
    2. It’s ok to add, delete or swap among the TTB-approved instructional statements. This one is on the list so it’s ok.
    3. Similarly, it’s ok to add, delete or swap among the TTB-approved responsibility statements. This one is ok to add, on this back label, because it’s on the list.
    4. Once again, ok to add, delete or swap among the TTB-approved environmental statements.
    5. I have added a food pairing recommendation and it’s ok because it’s pretty in line with those allowed on the list.

 

  1. Even though this one is very similar to 1., it’s not ok because it’s not on the approved list.
  2. This one is quite similar to 2., but not ok because it’s not on the list.
  3. Similar to 3., but not on the list so not ok.
  4. Similar to 4., not not ok because not on the list.
  5. This one is a bit trickier. This indicates a change from a glass bottle to a bag-in-box. The Circular says:  “TTB wishes to caution industry members about using this allowable revision when changing between different types of containers, for example, when changing from a keg label to a bottle label, or from a bottle label to a bag-in-a-box label.  Labels for different types of containers usually look very different and may contain label information specific to the container type (e.g., instructions for serving from a bag-in-a-box container) or different graphics. … These restrictions make it unlikely that you will be able to use a label approved for one type of container for a different type of container without submitting the new label to TTB for approval.” Here, the front v. back probably changed, and it’s arguable that the spigot side would be the brand label, so it’s not an especially good idea to assume ARTAL alone would save anyone.

If you have any great ideas for how to expand the list still further, let us know.

Apothic Brew – Wine + Coffee for Real?

I most definitely did not see this one coming. I can imagine a lot of oddball combinations, but I would not have expected anyone to combine red wine and coffee.

The news of this product just came in a few minutes ago via Wine & Spirits Daily. Though the combination does not sound like the best, to me, I wouldn’t mind trying it, especially since the graphic design is so nice. The wine aspects are very much downplayed, on the main display panel. The UPC-side label makes it clear that the product is RED WINE INFUSED WITH COLD BREW COFFEE. E. & J. Gallo’s approval for this wine is here.

Gallo’s press release says the product is rolling out April 1st, and it’s no joke; Apothic’s winemaker said:

Last year during the long hours of harvest, I joined the cold brew craze myself. … Quickly, I realized that many of the characteristics in cold brew coffee and red wine naturally complement each other. This led us to experiment with a few blends, eventually leading to the seamless creation of Apothic Brew, which brings together red fruit notes and subtle mocha essences of cold brew.

Trumpy Libations

This is not quite the Trump Vodka of yore, but it is quite Trumpy nonetheless. Don’t you think so?

The whiskey on the left is America First Whiskey, approved for a DSP in San Marcos, California. I believe I see some sharks and monster trucks to go along with the tanks, jets, and deltoids. I found a discussion about the goals for this label, and it appears that the designer nailed it:  “We want people who love Donald Trump and the idea of “Make America Great Again” to look at this logo and say ‘Hell yes! That’s the whiskey I want!'” They also considered throwing in some fanny packs, and a T-Rex — but perhaps that would go too far. The bottler proclaimed:  “We’re [making a whiskey for Americans]  interested in Freedom, beards, rifles, explosions, The US Constitution, military/veterans, and reflecting on how badass Donald Trump is.”

The wine, on the right, is branded as Make America Grape Again, American Red Wine. It is bottled by Azari Winery of Petaluma, California.

And then there is Covfefe, with no less than six related label approvals:

  1. Artisanal Covfefe Stout
  2. Imperialist Pig Covfefe Stout
  3. Covfefe Merlot
  4. Covfefe Red
  5. Saugatuck Covfefe Ale
  6. ………………….and…………………………..the first one out of the gate is Surly Covfefe Beer (approved June 7, 2017, just a few days after the infamous tweet of May 31, 2017)

In addition, there are no less than 38 trademark applications including the term COVFEFE.

Branding Your Marijuana Business

One of the predominant ways businesses protect their brands is through Federal trademark registration at the United States Patent and Trademark Office (USPTO). In order to federally register a trademark, the trademark must be used in interstate commerce—lawfully. Because marijuana is federally illegal, it is impossible for a marijuana business to lawfully use a trademark in connection with marijuana and/or marijuana-specific goods and services in interstate commerce. Since Federal trademark registration is not an option, marijuana businesses need to get creative in how they protect their brands. Here are some alternative options for how a marijuana business can protect its brands.

Obtaining Federal Registration for Analogous Goods and Services

One tactic marijuana businesses have used to try and protect their brands is to obtain federal trademark registration for goods and services analogous to marijuana goods and services. These businesses might apply for trademark registration in connection with goods and services like tobacco, smoking devices, rolling papers, vaporizers, clothing, hats, and retail tobacco stores or services. The idea behind this tactic is rooted in trademark law which recognizes that similar marks used on related goods/services can cause consumer confusion as to the origin of those goods/services. By obtaining a federal registration for related goods and services, these businesses believe that they will be able to prevent third parties from using or obtaining registrations for confusingly similar trademarks in connection with marijuana goods and services if and when marijuana is legalized. They’re taking a gamble that their rights to, for example, a tobacco-related trademark will keep others from using that name in connection with marijuana.  

The logic is, at least in theory, sound, and we see this type of thing quite often with alcohol beverage trademarks. The USPTO routinely refuses trademark applications for beer that are similar to existing registrations for wine or spirits. Alcohol beverage trademarks are also commonly refused in light of similar prior registrations for restaurants and bars, or even glassware.

There are, of course, some caveats with this approach. First, to apply for a trademark for analogous goods/services, you must have a bona fide intent to use the trademark in connection with those analogous goods/services, and/or (ultimately) actually use the trademark in connection with those analogous goods/services in order for the trademark to register. Someone who is merely trying to reserve a right in a name for marijuana is likely vulnerable to opposition or cancellation. Second, we don’t know whether (or the degree to which) the USPTO or courts will treat tobacco and tobacco-related goods/services and marijuana and marijuana-related goods/services as related goods. We can predict that these bodies will treat them as related goods, but this has not yet been tested. Finally, there are other factors at play, too, such as the difference in the trade channels in which tobacco and marijuana do (or will) travel, and possibly differences in consumer sophistication.

Due to this uncertainty, marijuana businesses should consider additional tactics to protect their brands.

Relying on Common Law Rights

Are you currently (and lawfully) selling marijuana under a brand name in a state in which marijuana has been legalized? If so, chances are you already have some “common law” trademark rights to that brand name. Common law trademark rights require no registration–they arise out of, and rely on continued and substantially exclusive use of, a trademark in connection with the sale of goods or services. These rights are limited to the goods/services in connection with which the trademark is used, and the geographic areas in which the mark is used (including the areas of “reasonable expansion”). So long as you maintain these common law rights by continuing to use your trademark, you can enforce these rights against junior users of confusingly similar marks on confusingly similar goods/services within your geographic area. If you have a mark you are selling products under, you should  put third parties on notice of your claim to a the mark by placing the letters TM (e.g. HANGRY BUDS™) next to the mark everywhere you use it (on packaging, advertising, etc.). Also, you should take care to use your mark in a consistent manner (same spelling, same capitalization, etc.) to strengthen your claim to the mark.

Relying on common-law trademark rights can be a good fallback solution for preventing third parties in your geographic area from using confusingly similar marijuana trademarks. But, common-law rights have limitations, and require excellent recordkeeping and proof to substantiate a claim to a mark, as of a certain date.

Obtaining State Trademark Registration

As illustrated above, common-law rights provide some fallback rights to a mark, but are somewhat limited. A much better solution is to seek a state trademark registration. Generally speaking, a state trademark registration provides you with the exclusive right to use a mark in connection with the described goods as of the date of filing. Each state has their own requirements for registration, but in general, they can be obtained by applying, paying a fee, and showing use of a trademark in connection with certain goods in the particular state. Here is a list of states where marijuana trademark registration is possible, as of late 2017 (the list is growing):

  • Alaska
  • Arizona
  • Arkansas
  • California (January 1, 2018)
  • Colorado
  • Florida
  • Hawaii
  • Indiana
  • Louisiana
  • Maine
  • Maryland
  • Michigan
  • Montana
  • Nevada
  • New York
  • North Dakota
  • Oregon
  • Vermont
  • Washington

As mentioned above, state trademark registrations entitle the registrant to the exclusive right to use the trademark within the entire state, and are prima facie evidence of the validity of the registration and the registrant’s ownership of the registration. Extending the example from above, a state trademark registrant based in San Francisco could rely on her state trademark registration to go after a junior user of a confusingly similar trademark in Los Angeles (or anywhere else that may be outside the registrant’s geographic area).

Conclusion

Just like other businesses, Marijuana businesses should prioritize protecting their brands, but due to various restrictions, must get creative in doing so. While federal trademark registration for marijuana and marijuana-specific goods/services is unavailable currently, obtaining federal registration for analogous goods may allow you to prevent others from using or registering the trademark in connection with marijuana. Relying on common law rights alone provides limited rights but might cause headaches down the road if you plan to expand beyond your initial territory, or if you have a difficult time substantiating your rights to an early sale date. Obtaining a state trademark registration is likely the best bet for most Marijuana businesses, at least until federal law changes and federal registration becomes a possibility.

Perspective from a Pernod Lawyer

There is lots of focus on what the craft people are up to, and certainly there is much movement in that regard. But here we turn back to the big companies, and how they see things. Artisan Spirit magazine recently published my email interview with Tom Lalla. Tom was the head lawyer at Pernod for many years. An excerpt is below, and you can find the full article at the link.

Who were the legendary beverage lawyers before you, and what made them so?

The outstanding, legendary beverage lawyer of the past few generations was Abe Buchman. I worked with Abe and his firm for 10 years and then continued to work with him when I joined Pernod Ricard. Abe was a mentor and a role model for tireless devotion to the industry. Abe taught me the necessity of finding practical solutions for our clients’ issues.  Sometimes, as lawyers, we lose sight of being practical. We get hung up in the legal niceties of an issue. What Abe stressed was that we find a solution that was practical for the client and accomplished the client’s goals without running afoul of the legal requirements. Another legend was Bill Schreiber.  I had the pleasure of working with both Bill and Abe when the Buchman and Schreiber firms merged in 1986. Having both Abe and Bill together in the same office was a beverage alcohol lawyer’s dream come true. With so much shared knowledge about the law, the industry, and its players and so many exciting projects being worked on by them, it was a unique moment in my career.

Very few other people have a vantage point as good as Tom’s, after many decades building Pernod, and working at a top law firm specializing in alcohol beverage matters.

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