Direct-To-Consumer Wine Sales Tops $2 Billion in a Decade

Wines & Vines and ShipCompliant released the 2016 Direct-to-Consumer Wine Shipping Report, available on ShipCompliant's website and well-summarized here by Jim Gordon for Wines & Vines on January 25, 2016.  Notably, Direct to Consumer sales in the US reached $2 billion in just ten years after the Supreme Court paved the way for direct-to-consumer wine shipments -- that is 8% higher in value and volume (which exceeds the 2.2% growth in the wine retail marketplace) and the average price per bottle of wine shipped is $38.

Release of .Wine and .Vin gTLDs

ICANN has released the new generic Top Level Domains (gTLDs) .WINE and .VIN, which will launch on November 17, 2015 on a limited basis only to owners of federally registered trademarks.   Whether these new gTLDs will gain traction with consumers and have marketplace value down the road or just be trees falling in the forest remains to be seen.   

Regardless, and as history has proven, unsavory entrepreneurs will look at this as an opportunity to make domain-brand grabs and later seek to sell them for a profit to rightful owners.  To assist registered trademark owners avoid cybersquatting and domain conflicts, ICANN is providing a two month period (the "Sunrise Period") to purchase domains BEFORE opening the new gTLDs to the general public.  This means that a trademark holder can purchase its [trademark].wine or [trademark].vin domain from November 17, 2015 until January 16, 2016 BEFORE it becomes available to the public. To take advantage of the Sunrise Period, you first need to "register" your marks with the Trademark Clearinghouse (TMCH).  Once registered with TMCH, you can purchase domains that mirror your trademark registration (with minor variants).      

If you would like to pursue .vin and .wine domains for your registered wine trademarks during the Sunrise Period, please contact us for more information.

If you have wine brands that are not registered trademarks, while you may not pursue them during the Sunrise Period, you may do so afterwards using standard domain services (such as GoDaddy).  If the domain has already been taken and you have legitimate prior trademark rights in the mark, you may challenge the domain registration.  If you find yourself in such a situation, we can assist you in resolving the conflict.  

Please contact us if you have any questions or want to pursue domains for any of your registered wine marks during the Sunrise Period.     

HOW THE Craft Beverage Modernization and Tax Reform Act AFFECTS THE KEY PLAYERS IN THE CRAFT BEER INDUSTRY

In summarizing a proposed Congressional bill to amend the Internal Revenue Code as it related to the taxation of alcoholic beverages, Market Watch's June 26, 2015 article provides an interesting insight into the craft beer market and its key players, noting that the "number of breweries in the US has grown steadily from 1,447 in 2005 to more than 3,400 today" and that craft beer has "grabbed an 11% share of the beer market by volume and a more than 19% share of that same market in dollars."  That's a "nearly $20 billion industry that's grown by double-digit percentage points for the past decade."

Mass-Mailing Scam to Trademark Owners

As a reminder to our clients, all communications regardning their trademark applications should come from the United States Patent & Trademark Office in Alexandria, Virginia or @uspto.gov.  As INTA reports on November 1, 2015, one scammer gets indicted for mail fraud and aggravated identity theft for his use of deceptive practices in soliciting payments from trademark owners.

 

 

Global Wine Production on the rise

The Drinks October 29, 2015 article covers a report by the International Organisation of Vine and Wine that concludes that global wine production have increased by 2% in 2015 with Italy as the world’s biggest producer. Other trends include Chile's new production record of 12.9 million hectolitres, up 22.6% from 2014, and a 20% increase in rose consumption since 2002.

French Report on Thriving Chinese Counterfeit Wine Market

Wine Spectator article on October 8, 2015 notes that "the main counterfeiters are importers, distributors and subdistributors" and that counterfeit wines are "generally a very high quality, which makes it very difficult to tell the real from the fake."  The report also notes the rise of "brand squatting--acquiring the Chinese rights to a foreign wine's name" an all-to-familiar occurrence for some of our clients.  A recent attempt to trademark all of the  Greek grape variety names showcases that "no brand or region or grape is safe."  Hopefully, recent changes to Chinese trademark law will help minimize brand squatting in China.

Trademark Protection Strengthened by a Copyright Registration

Great article by Fish & Richardson PC for the IP Section of the California State Bar on September 18, 2015 addressing situations where it behooves brand owners to not only seek trademark registration but also copyright registration.  The most notable advantages to seeking copyright protection of a design mark include a less stringent test to find infringement (likelihood of confusion v. substantial similarity), statutory damages awards and attorneys' fees, as well as heightened protection against grey-market goods and protection abroad. 

USPTO Allows Changes to Goods/Services Due to Technology

This September 4, 2015 National Law Review article and USPTO announcement provide a detailed summary of a pilot program announced on September 1st by the USPTO that would allow amendments to goods and services in trademark registrations where necessary because of evolving technology.  This allows a trademark owner to preserve a registration where technology has evolved in such a way that the registrant can no longer use the mark in its original form but the underlying content or subject matter remains the same.  Examples include amendments from "floppy discs for computers for word processing" to "online non-downloadable software for word processing"; "printed books in the field of art history" to "downloadable electronic books in the field of art history; "telephone banking services" to "electronic banking services." 

Prevailing Against a Chinese Trademark Hijacker

A hijacked mark in China is an all-to common event.   This July 7, 2015 article from IPPro The Internet summarizes two recent cases with diametric results:  Michael Jordan failed to invalidate a Chinese trademark using a transliteration of his name while Michael Bastian successfully invalidated a trademark squatter's registration of his name and Chinese transliteration.  The disparate results rely on the fact that Bastian was able to prove the hijacker's bad faith based on the hijacker's ownership of 120 trademark registrations with no business related to these marks.  Interestingly, Bastian was not able to prove prior use, but the Chinese appellate board still found sufficient bad faith. 

Napa Exports Double in a Decade

The Napa Valley Register reports on July 27, 2015 that wine exports from Napa have doubled in ten years, totaling $343 million dollars' worth of good exported in 2014.  Nearly 70% was likely wine.  The article also notes that 90% of US wine exports come from Napa. 

 

A Booming Craft in California

A report summarized by Rupart Millar on May 7th for the Drinks Business shows that the craft beer industry contributed $6.5 billion to the California economy in 2014 and that California produces the most craft beer in the US.  Interesting conversion of pints per person: if you split craft beer production by the population of California, it's only 13 pints per person (versus 100 pints per person Oregon if you split its barrel production by population). 

Another brew v. wine standoff

Vince Winkel of the Daily Camera reports on May 1, 2015 that winery Ste. Michelle Wine Estates has sued Twisted Pine Brewing Company for trademark infringement over its use of Northstar Imperial Porter based on its Northstar wine brand.  A copy of the federal complaint is available here.  Although unlikely to go to trial, this is a good example of the increase in litigation between breweries and wineries.  Do you think a consumer is likely to be  confused between Northstar Imperial Porter and Northstar wine? 

Anheuser-Busch Attempt to Trademark "Brewed the Hard Way" Foiled

Tribune News Services' June 5, 2015 article brings to light the importance of timing in trademark application and that constant tension between dates of first use and application filing dates.  Anheuser-Busch tried to phrase "Brewed the Hard Way" as used on Superbowl ad but Martin City Brewing filed a trademark application for Hard Way IPA the day before.  Anhesuer-Busch states that "Budweiser had been 'brewed the hard way since 1876.'  Anheuser-Busch's application is currently suspended and the brewery's application was approved for publication, thus subject to public opposition. It will be interesting to see where this ends up.

MICHAEL JORDAN UNABLE TO PROTECT HIS NAME BRAND IN CHINA

As is evidenced on Michael Jordan's recent loss in an appellate trademark court in China, protecting one's brand in China -- even one as distinct and presumably invulnerable as the name brand "Michael Jordan" -- takes careful planning and a distinct strategy. This article by our foreign counsel Deanna Wong on June 2nd for Bloomberg news showcases the different strategies implemented by Michael Jordan and Allen Iverson, and different results.

Moving Towards a More Global Wine Market

Forbes' February 16th article on global wine consumption and production states that, although France was the world's biggest wine producer in 2014, its market share of the global wine production is slipping and that "[i]f the current trends continue (based on 2000-2012[,] Europe will no longer be the world's biggest wine producer by 2030."  Meanwhile, the percentage of wine exports throughout the world is rapidly increasing: "[t]oday, some 40% of all wine is exported, i.e. consumed in another country than where it was produced. This is a dramatic increase from the early 2000s when only 25% was exported."

Registering Your Last Name ®

In the wine industry, the use of surnames as brand names is ubiquitous.  This National Law Review article on March 18, 2015 discusses the challenges of seeking trademark protection for personal names, noting that "as trademark law has evolved, so has the view that everyone has a 'right' to use their own name as a mark. The modern view focuses on protecting the public from confusion, such that a subsequent user may face limits to using their own name if it would be likely to cause confusion with an existing mark" and citing a court ruling that "[a] person has no right to use his name as a trademark simply because of the fortuity of his parents and their choice of names. The world is full of people who cannot use their names in whole industries: Marriotts in motels, Hugheses in oil tools, and McDonalds in fast foods."

Trademarks in Cuba and Changes in Cuban Policy

This JD Supra article on March 4, 2015 highlights the importance for US brand owners to file trademark applications in Cuba to protect their brands as US policy shifts in Cuba and the Cuban market opens to US goods and services.  Specifically, it notes that Cuba is a "first-to-file" system (the first party to file a trademark application will be deemed the owner of the trademark) and that US regulations permit trademark registration in Cuba.  Therefore, "now that the prospects [of trading in Cuba] are rising, so is interest in owners registering their marks [in Cuba], and so, too, the interest in pirates exploiting their opportunities."