A Trademark Year in Wine and Beer: Our 2014 Holiday Buyer’s Guide to Disputed Beverages

DrinkersIf you are hosting or attending a party this holiday season, you probably need to pick up something to drink. This year, why not pick up a conversation starter as well? See if your local liquor store (in our neck of the woods, a “packie”) carries one of the many beverages that were the subject of a trademark or similar dispute in 2014. In deciding an 1891 trademark case, Lord MacNaghten famously quipped: “Thirsty folk want beer, not explanations.” Well, with our guide, you can provide both beer and explanations.  You’ll be of the life party (provided, that is, the party is full of trademark lawyers with no outside interests).

Where possible, we’ve included information we found online about price and availability, but we haven’t verified that information and can’t vouch for the sites to which we’ve linked (or whether it’s legal for you to buy this stuff online from your location). Also, with very few exceptions, we have no idea how any of these products taste. So, if you want to tell us about your experience with one of these potables, or if we missed your favorite disputed quaff, write in and let us know!

BEER

AlamoAlamo Beer. In March, the makers of Alamo Beer filed suit for trademark infringement in the Western District of Texas, alleging that a competitor was using a confusingly similar trade dress, including a silhouette of the historic building.  The State of Texas, owner of the actual Alamo, intervened (with permission of the Court and over the plaintiff’s objection) in order to protect its own ALAMO marks. A six-pack of Alamo Beer is reportedly on sale here for $8.20. The defendant’s Texian brand beer is available at various Texas locations. Alamo Brewing Co., LLC v. Old 300 Brewing Company, Case No. 5:14-cv-00285.

BenediktinerBenediktiner Weissbier. The TTAB reversed the refusal to register the mark BENEDIKTINER WEISSBIER for a German beer manufactured in a joint venture with a Benedictine order of monks. The examiner found that the word “Benediktiner”  was merely descriptive of the beer’s monastic origins, but the TTAB held that the term functioned as a trademark to identify the Benedictine order as a single commercial source of goods. The brew does not appear to be easily available in the U.S., but we found some in the UK for under £2 a bottle. In re BEDA Investments GmbH, 2014 TTAB LEXIS 251 (Trademark Trial & App. Bd., June 10, 2014).

Boneyard Brew. The TTAB affirmed the refusal to register BONEYARD BREW for sauces in light of its likely confusion with prior “Boneyard” registrations. Information about Ohio’s Boneyard Beer Farm is available here.  Also, “Boneyard Beer” is available from this Oregon brewer. In re Perry, 2014 TTAB LEXIS 155 (Trademark Trial & App. Bd. May 2, 2014).

Dark Horse. Michigan-based Dark Horse Brewery filed a trademark infringement action against Kansas-based Dark Horse Distillery in the Western District of Michigan.  The Court denied the defendant’s motion to dismiss, holding in part that the defendant’s interactive website served as the basis for personal jurisdiction. Dark Horse Distillery whiskey is advertised here at list prices between $55 and $80 per bottle. Dark Horse beer is reportedly on tap at the Dark Horse Brewing Company at $4 for a 16 oz. draft. Mor-Dall Enters. v. Dark Horse Distillery, 2014 Dist. LEXIS 51721 (W.D. Mich. 2014).

manDos Equis. The Mexican brewer responsible for the “stay thirsty, my friends” campaign  successfully opposed an individual’s attempt to register the mark STAY HYDRATED MY FRIENDS. Dos Equis is available pretty much everywhere, including the twelve pack advertised here for $12.99. Cervezas Cuauhtemoc Moctezuma SA de CV v. Branden Weaver, 2014 TTAB LEXIS 321 (Trademark Trial & App. Bd. July 31, 2014).

Empire Strikes Bock. Lucasfilm Ltd. opposed the registration of EMPIRE STRIKES BOCK for beer brewed by a New York company doing business as the Empire Brewing Company. The matter is pending.  Empire beers appear to be only available on tap at its own pub and at a few other locations in New York. Lucasfilm Ltd. v. Empire Brewing Company, Opp. No. 91218848.

SevenFive Golden Rings. The TTAB affirmed the refusal to register 5 GOLDEN RINGS for beer on the grounds that it might be confused with GOLD RING for wines.  A 2009 Gold Ring Cabernet Sauvignon costs about $6 a bottle, according to this siteThe Bruery’s 5 Golden Rings beer appears to be extinct, but a 750ml bottle of its similarly-themed  7 Swans-a-Swimming Ale is available for about $10.99. The Bruery, LLC, Serial No. 85656671 (Trademark Trial & App. Bd. Sept. 24, 2014).

SharkGreat White. In July, Lost Coast Brewery filed suit in the Northern District of California, alleging that the shark-themed label of Aviator Brewing’s “Mad Beach” wheat beer infringed the trade dress of its own GREAT WHITE wheat beer. The Court dismissed the case for lack of personal jurisdiction, and the parties are now fighting it out in North Carolina. A six-pack of Great White is advertised here for $8.99.  Information about Mad Beach is available here. Table Bluff Brewing, Inc. v. Aviator Brewing Company, Inc., Case No. 3:2014-cv-03433.

Hofbrau Munchen. A National Arbitration Forum panel awarded hofbrauhausbuffalo.com to the importer of Hofbrau Munchen beer, finding that the respondent had no good faith reason to have registered the domain name. Various Hofbrau Munchen brews are available in the U.S. The stores listed here advertise 6 packs of the Maibock for $10.99 and $11.99. Hofbrauhaus of America, LLC v. Forgotten Buffalo, 2014 NAFDD LEXIS 567 (NAF June 2, 2014).

No Boundary IPA. The PTO refused HighWater Brewing’s attempt to register NO BOUNDARY IPA for beer in view of the previously registered NO BOUNDARIES mark for wine.  The TTAB affirmed, holding that the goods were related and the marks similar enough to cause confusion. Bottles of the IPA reportedly average $9, and kegs are available from various distributors. In re High Water Brewing, Serial No. 85886282 (Trademark Trial & App. Bd. October 3, 2014).

hazePurple Haze. The TTAB sustained an opposition to the registration of SUNNY HAZE for beer, holding that there was a likelihood of confusion with the PURPLE HAZE raspberry beer  mark. The applicant unsuccessfully argued that only the PURPLE HAZE brand would call to mind the Jimi Hendrix song, thus differentiating the products and dispelling any confusion.  You can find a Purple Haze retailer here; a 12oz. bottle reportedly goes for about $5. More information about Sunny Haze beer is available here. Abita Brewing Co., LLC v. Mother Earth Brewing, LLC, Opposition No. 91203200 (Trademark Trial & App. Bd. September 11, 2014).

RogueRogue. Plaintiff, the seller of ROGUE brand clothing, filed a declaratory judgment action to prevent the Oregon Brewing Company from expanding the Rogue beer brand into beer-themed clothing.  In August, the Southern District of New York granted the plaintiff summary judgment with respect to its trademark claims. The parties are still engaged in motion practice. Various Rogue ales appear to run from about $3 to about $9 for a 22oz bottle. Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Co., 2014 U.S. Dist. LEXIS 109226 (S.D.N.Y. 2014)

MixSpicy Beer Mix. In a nasty dispute involving allegations of double-agent corporate espionage and mysterious text messages, the Central District of California refused to dismiss Spicy Beer Mix, Inc.’s trademark claims over its “spicy beer mix Chevalada” brand. We found a case of 24 cups of the mix offered here for about $30. Spicy Beer Mix, Inc. v. New Castle Beverage, Inc., Case 2:14-cv-000720.

WINE

BartonArcata. The PTO refused to allow registration of ARCATA for wines on the ground that it was primarily geographically misdescriptive – Arcata is a town in Northern California which apparently had nothing to do with the applicant’s wine.  However, the TTAB reversed, holding that Arcata was not particularly known for producing wine, so consumer purchasing decisions would not be influenced by the name. In re D’Andrea Family Limited Partnership, Serial No. 85834204 (Trademark Trial & App. Bd. October 15, 2014).

Barton Family Winery. The refusal to register the BARTON FAMILY WINERY mark was affirmed on the grounds that it was likely to cause confusion with THOMAS BARTON wines. Barton Family wines, including a neat-looking set of wolf-themed vintages, are available here for prices ranging from about $16 – $45. A Thomas Barton reserve bordeaux reportedly averages about $13. In re Barton, Serial No. 85554813 (Trademark Trial & App. Bd. Nov. 7, 2014).

Blends. The TTAB affirmed the resual to register BLENDS for wine on the grounds that it was merely descrptive of a wine composed of multiple grape varieties. More information about the company’s individual brands, which include Argento and Renwood, is available here.  Its Tomero Clasico Malbec reportedly sells for $14 a bottle. In re: Ren Acquisition, Inc., Serial No. 85787527 (Trademark Trial & App. Bd. October 3, 2014).

Celebrity CellarsThe TTAB affirmed the refusal to register the CELEBRITY SOURS mark for pre-mixed alcoholic beverages in view of its likely confusion with the KissCELEBRITY CELLARS mark for wine.  You can find Celebrity Cellars wine here.  A “KISS This” Cabernet goes for $70 on the company’s website (Gene Simmons tongue sadly not on display), and a Barbara Streisand merlot for $40. In re DNA Consulting, Serial No. 85574196 (Trademark Trial & App. Bd. October 27, 2014).

Century. The TTAB affirmed the refusal to allow the registration of CENTURY for wine on the grounds that, under the doctrine of foreign equivalents, it would be confused with SECOLO wine (secolo is Italian for “century”). Century wines are advertised here for between $14 to $16 a bottle. Secolo reportedly averages about $28 per bottle. In re The Biltmore Co., Serial No. 85561663 (Trademark Trial & App. Bd. November 21, 2014).

Chateau Ausone.  The makers of this Saint-Emilion Grand Cru Bordeaux failed to pry the ausone.com domain name from an Australian real estate developer in a WIPO arbitration proceeding.  According to wine-searcher.com, a bottle of the Premiere Grand Cru Class A averages about $790. Vauthier v. Weiskop 2014 UDRP LEXIS 1203 (WIPO September 6, 2014).

Chateau Lafite Rothschild . The iconic Chateau Lafite Rothschild vintner won a judgment before a WIPO Administrative Panel and was awarded baronrrotschild.com and rothschildchateaulafite.com. The average price of a First Growth Premier Grand Cru is reportedly about $1,005, and a couple dozen bottles are available on ebay, starting at various prices. Chateau Lafite Rothschild v. Gill, 2014 UDRP LEXIS 1508 (WIPO November 18, 2014).

LatourChateau Latour. In 2013, billionaire wine collector Bill Koch convinced a jury that defendant Eric Greenberg had sold him 24 bottles of counterfeit wine. The jury awarded Koch $355,811 in compensatory damages and $12 million in punitive damages. In 2014, the Southern District of New York cut that amount down to a total of about $1 million. One of the vintages at issue, a 1928 Chateau Latour, fetches an average of over $4,000 per bottle. Koch v. Greenberg, 14 F.Supp.3d 247 (S.D.N.Y. 2014).

Chateau Maïme. The maker of this French rosé forgot to renew its registration of chateaumaime.com, and the domain was snapped up by an internet porn company. The disputed domain was ordered returned to Chateau Maïme pursuant to a WIPO Administrative Panel decision. The wine is advertised on the company’s website for 112.00€ per case. Domaine de la Maime v. Perkins, 2014 UDRP LEXIS 1305 (WIPO October 1, 2014).

ChocoChocoVine. The Court dismissed some but refused to dismiss other contract claims arising from a dispute triggered by the transfer of the brand rights to Chocovine, a combination of red wine and Dutch chocolate.  It is reportedly available for about $9 per bottle. Specialty Mktg. Group v. Katz, 2014 U.S. Dist. LEXIS 73861(D. Mass. 2014).

Dracula’s Bloodlust. In 2008, two wineries entered into a settlement agreement over the sale of vampire-themed wine, which plaintiff Vampire Vineyards Draculalleges defendant breached in 2014 by marketing “Dracula’s Bloodlust” wine. According to the plaintiff, the defendant’s response was “that Dracula has nothing to do with Vampires.” The Court ordered the defendant to retain counsel and respond to the contempt motion filed by the plaintiff. Plaintiff’s “Dracula’s Blood” merlot ($12.95), and other beverages, are available here. Defendant, the Romanian Recas winery, appears to have stopped promoting the accused product. TI Bev. Group Ltd. v. S.C. Cramele Recas SA, 2014 U.S. Dist. LEXIS 64740 (C.D. Cal. 2014).

duckDuckhorn. The Eastern District of New York refused to dismiss a breach of contract claim filed by California vineyard Duckhorn, which alleged that New York vineyard Duck Walk had violated a prior settlement agreement over the use of the word “Duck” and images of ducks for the sale of wine in certain territories. Duck Walk’s Boysenberry Fruit wine is listed here for $14.99. Duckhorn vintages run from about $29 to $135 a bottle. Duckhorn Wine Co. v. Duck Walk Vineyards, Inc., 2014 U.S. Dist. LEXIS 78325 (E.D.N.Y. 2014).

GalloGallo Wine. The Plaintiff in this trademark action, the Ernest and Julio Gallo Wine convinced the Eastern District of California to enjoin the sale of defendant’s El Gallo energy drink (but not the defendant’s “El Gallito” energy drink). The Gallo family of wines are distributed under dozens of brand names and they are available in numerous locations.  Their Cabernet Sauvignon is on sale here for $5.99 a bottle. E. & J. Gallo Winery v. Grenade Beverage LLC, 2014 U.S. Dist. 113841 (E.D. Cal. 2014).

Good Box. The refusal of the GOOD BOX mark for wine was affirmed by the TTAB on the grounds that it was merely descriptive of good wine sold in a box. In re Switzerly, Inc., Serial No. 85720234 (Trademark Trial & App. Bd. August 20, 2014).

HallowineHallowine. As our own Josh Jarvis previously reported, the Seventh Circuit affirmed the Door Peninsula winery’s  summary judgment victory over the Illinois River Winery with respect to the apple-spiced “Hallowine” beverage.  The defendant’s Hallowine is still offered for sale here at $12.99 per bottle.  The plaintiff’s Hallowine is available here for $9.99. C&N Corp. v. Kane, 756 F. 3d 1024 (7th Cir. 2014).

Leonessa. The TTAB affirmed the refusal to register LEONESSA for wines on the grounds that the applied-for mark too closely resembled the previously registered LEONESS CELLARS mark for wine. Leoness Cellars wines are available here starting around $24. Information about Leonessa wines, a brand of Santini Fine Wines, is available here. In re Santini Fine Wines, Inc., Serial No. 85592838 (Trademark Trial & App. Bd. October 29, 2014).

Matiz. Power-Selles Imports, which markets Spanish olive oil and other food products under the MATIZ ESPANA mark, opposed Bodegas Neo’s application to register MATIZ for Spanish wine (“matiz” means shade, or nuance, in Spanish). The TTAB dismissed the opposition because it was not supported by evidence. We couldn’t find the Matiz wine online, but Bodega Neo’s entertaining website is located here, and its Ribera del Duero red reportedly averages $33 a bottle. Power-Selles Imports, Inc. v. Bodegas y Vinedos Neo, S.L., 2014 TTAB LEXIS 55 (Trademark Trial & App. Bd. February 14, 2014).

N2N2Wines. A PTO examiner refused registration of the N2WINES mark for wine “on tap” sold in kegs, finding that it was merely descriptive because N2 is the chemical symbol for nitrogen, the gas used to dispense the wine from the keg.  But the TTAB reversed the refusal to register, holding that the applicant was not merely using N2Wines as a description of the chemical, but as a double entendre (N2Wines = “into wines”).  You can pick up a keg at various locations in North America and Japan. In re N2Wines, LLC, Serial No. 85680969 (Trademark Trial & App. Bd. April 15, 2014).

Naughty Girl. The TTAB granted summary judgment against an attempt to cancel the NAUGHTY GIRL mark for fortified wines. The Board rejected the petitioner’s argument that the mark was merely descriptive of the beverage since drinking it would “make women naughty.”  Naughty Girl is available here for about $15 a bottle. Alvi’s Drift Wine Int., v. von Stiehl Winery, Cancellation No. 92058100 (Trademark Trial & App. Bd. September 12, 2014).

NOPA. The Napa Valley Vintners Association’s opposition to the registration of the NOPA mark for wine was dismissed for failure to establish evidence of standing.  Napa Valley Vintners Association v. Wine Vision, 2014 TTAB LEXIS 335 (Trademark Trial & App. Bd. July 29, 2014).  

Pagos Del Rey. The TTAB sustained an opposition to this Spanish vintner’s attempted  registration of PAGOS DEL REY for wine because of the preexisting PRADOREY wine mark. A bottle of a Pagos Del Rey red appears to be available for about $14.99 a bottle. The PradoRey red is reportedly in the same price range. Real Sitio de Ventosilla, S.A. v. Pagos del Rey, Opposition No. 91201741 (Trademark Trial & App. Bd. August 22, 2014).

SPIRITS  

CrownCrown Royal Whiskey. A federal judge in the Southern District of Texas refused to dismiss a trademark action by the makers of Crown Royal whiskey which alleged that the makers of Texas Crown Club (and other state-themed whiskeys) were infringing Crown Royal’s brand name and velvet drawstring bag trade dress. As of this writing, the case is in the midst of a jury trial. Crown Royal vintages vary in price, but appear to start at around $30. A bottle of Texas Crown reportedly averages $22. Diageo North America Inc. v. Mexcor Inc., Case No. 4:13-cv-00856.

CrocCroc-Tails. Mad Croc Brands promotes the use of its energy drinks for making “Croc-tails,” for example by offering recipes to bartenders on its website, and it also owns the registered mark CROCTAIL for wine and spirits. However, the petitioner in this ongoing cancellation proceeding argues that Mad Croc has abandoned the mark because it doesn’t actually sell alcoholic beverages. You can find the respondent’s “Croc-tail” recipes here. SaddleSprings, Inc. v. Mad Croc Brands, Inc., 2014 TTAB LEXIS 161 (Trademark Trial & App. Bd. June 18, 2014).

FGUDate Grape Kool-Aid. Gonzaga University brought a trademark action against a Spokane bar for displaying the GONZAGA mark and mascot, including in connection with its menu of controversially-named drinks such as the “Date Grape Kool-Aid” and the “Strawberry Deep Throat Banana.”  After the suit was filed, the bar promoted the “F.G.U. Q-Laid” daiquiri, with the proceeds apparently going to its legal defense fund (F.G.U. supposedly stands for “Forgive Gonzaga University”).  The Eastern District of Washington held that there was a likelihood of confusion and granted partial summary judgment for Gonzaga. We’ve heard you can find a recipe for the “Date Grape Kool-Aid” online, but we misplaced our ten-foot pole so we’re not going there. Corp. of Gonzaga Univ. v. Pendleton Enters., LLC, 2014 U.S. Dist. LEXIS 136087 (E. D. Wash. 2014).

DukeDuke Bourbon. In July, the estate of actor John Wayne filed suit against Duke University in the Central District of California, asking the court to declare that a John Wayne-branded bottle of “Duke” bourbon would not be confused with the school’s brand. Apparently, this is but one chapter in a long-running dispute between the two entities. The Court declined to exercise personal jurisdiction over the North Carolina university and dismissed the case.  You can check the availability of Duke Bourbon at the store locator here; it reportedly averages about $35 per bottle. John Wayne Enterprises v. Duke University, Case No. 8:14-cv-01020.

Metaxa. The makers of Metaxa, a Greek blend of wine distillates invented by Spyros Metaxa in 1888, were unable to wrest control of metaxa.net from Dr. Panagiotis Metaxas, a Wellesley College professor. A 750ml bottle of the Seven Star Metaxa variety is advertised here for about $25. Remy Cointreau Luxembourg S.A. v. Panagiotis Metaxas and Tetnet Internet Promotions, Inc., 2014 UDRP LEXIS 731 (WIPO June 17, 2014).

Pernod. The Pernod Ricard wine and spirits conglomerate convinced a WIPO Administrative Panel to transfer to it the domain name pernad.com, which corresponding website was being used to divert traffic to an unauthorized “mirror” of the company’s official website. The anise-flavored liquor which launched the Pernod brand in 1928 is still made and reported to average about $30 a bottle. Pernod Ricard v. Whoisguard Protected, 2014 UDRP LEXIS 1472 (WIPO November 12, 2014).

SkinnySkinnygirl Margarita. In this Massachusetts state court case, the trademark licensee of the Skinnygirl Margarita brand convinced the Appeals Court to overturn a decision of the Alcohol Beverages Control Commission, thus allowing it to switch wholesale distributors. The company, owned in part by reality TV star Bethenny Frankel, has a retail outlet locator here.  We’ve seen 750ml bottles advertised for about $11. Beam Spirits & Wine LLC v. Alcoholic Bevs. Control Comm’n, 2014 Mass. Super. Lexis 97 (Mass. Super. Ct. 2014).

Sin Spirits Red Velvet Cosmo. A National Arbitration Forum panel concluded that Sin Spirits LLC’s petition to obtain the sinvodka.com domain was filed in bad faith after the company’s attempts to purchase it from the rightful owners had failed. Sin Spirit’s Red Velvet Cosmo, made in partnership with Real Housewives of New Jersey participant Kathy Wakile, is available here for $12 per bottle. Sin Spirits LLC v. Peters, 2014 NAFDD LEXIS 771 (NAF July 18, 2014, 2014).

StoliStolichnaya Vodka. Stolichnaya Vodka had been distributed by a Soviet government-affiliated company until the nation’s collapse in 1990, when the company was transformed into a Luxembourg private joint stock enterprise. This suit, brought by an entity under the control of the Russian Federation, essentially seeks to reclaim the STOLICHNAYA mark from the Luxembourg concern. In August, the plaintiff’s trademark claims survived a motion to dismiss, but in November the Court determined that it did not have subject matter jurisdiction owing to issues of foreign law. The defendant’s vodka, which is what you see on your local store shelf (unless you live Russia), reportedly averages about $22 a bottle. Federal Treasury Enterprise Sojuzplodoimport v. Spirits Int’l B.V., 2014 U.S. Dist. LEXIS 118241 (S.D.N.Y. 2014).

TeaQuila: The TTAB affirmed a refusal to register the TEA QUILA mark for this Tea and Tequila combination, on the grounds that it was merely descriptive. Several recipes for like-named beverages are available online, including here and here. In re IV Science, LLC d/b/a Green & Co., 2014 TTAB LEXIS 260 (Trademark Trial & App. Bd. June 18, 2014).

TitosTito’s Handmade Vodka. In November, Courthouse News reported several class action false advertising lawsuits had been filed in state courts in California, Florida, Illinois and New Jersey against Tito’s Handmade Vodka, claiming that it wasn’t actually — yes, you guessed it — “handmade.” You can find a store locator here; a bottle is available here for $36.99.

***

Many thanks to cross-town friend-of-the-blog John Welch and his excellent TTABlog, from which we first learned about several of the unpublished TTAB decisions discussed herein.

 

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