How do you want your customers to remember your wine?  By its delicate palate, fruity overtones, oak tannin, smooth taste?  How about by its name?  None of the other fine characteristics will mean anything if your buyers cannot remember which Pinot Noir they enjoyed the most at that wonderful tasting party the other night.  Sure, they may remember they sampled a terrific wine during their winery tour, but wouldn’t it be great if they could recall the actual labels they wanted to recommend to their friends?  With all due respect to Shakespeare, names matter.  And that’s what a trademark is—the name you give your product or service to tell the world this is yours, your creation, your special elixir.

Any business that intends to create brand loyalty and grow its customer base should craft a distinctive trademark to set itself apart from its competitors.  Creating a trademark does not have to be expensive—Nike’s Swoosh trademark was designed for about $35—but you should choose one that is strong and therefore protectable in the long run.  A strong trademark is one that is both distinctive and commercially unique.

When you are brainstorming for a distinctive trademark and you have got your creative juices flowing, keep in mind that the most distinctive and therefore easiest trademarks to protect are those that are coined or made up words, like Kodak and Adidas.  Adidas® is simply the conjunction of the founder’s name, Adi Dassler.  If you can come up with a new word to sell your wine under, you’re well on your way to creating a solid, protectable trademark.

The next most distinctive trademarks are those that are arbitrary:  they have nothing to do with the product or services sold under the mark, like Apple for computers, or Starbucks for coffee.  Although these famous trademarks now immediately call to mind a particular product, these trademarks don’t describe it in any manner.

Slightly less distinctive – but still legally strong – are trademarks that suggest a particular quality or aspect be ascribed to the product or service being sold.   Suggestive trademarks require the consumer to draw some conclusion about the product or service being sold under that trademark, like Mustang or Intel.

Less strong are trademarks that describe some aspect of the product or service being sold.  Comfort Inn, Jiffy Lube and Toys R Us are descriptive trademarks.  As these trademarks show, if you are willing to devote enough resources towards building strong consumer identification in your descriptive trademark, then the trademark may acquire strength and legal protection despite its relative lack of distinctiveness.  Trademarks that appear relatively weak, but have strong consumer identification have acquired “secondary meaning.”  Think 24 Hour Fitness.  If you don’t have that kind of budget, however, it’s better to choose a trademark that isn’t quite so descriptive.

While we’re talking about descriptive marks, it’s also important to recognize that federal law prohibits registration of trademarks for wines that include false geographic descriptions.  In fact, a whole host of rules exist regarding what types of trademarks the United States Patent and Trademark Office (“USPTO”) will not register, but that’s another article.  Just remember not to include a false geographic term in your wine trademark if you hope to register with the USPTO.  A trademark for wine, first used in commerce after 1995 will be refused federal registration if it would mislead a purchaser about its geographic origin.  In other words, if your wine is not coming from Dundee, then don’t call it Dundee Dandy.

Generic words cannot be trademarks.  So if you were thinking of simply calling your wine Red Wine, you won’t be able to prevent competitors from doing the same because Red Wine is not a protectable trademark.

Which raises the next purpose for selecting a trademark.  Not only should you choose a conceptually distinctive trademark that consumers will remember your wine by, you also should choose a trademark that is commercially protectable from competitors.  The more commercially unique your trademark is, the more protectable it will be.

The first step in deciding whether you have a commercially protectable trademark is to determine if anyone else is already using the same trademark, and if so, how that trademark is being used.  For example, if another winemaker already uses Red Rooster for its wine, (and it does) then you best steer clear of that trademark.  However, if the only other use of Red Rooster was for an unrelated product – say, electric blankets – you might be able to use the same trademark for your wine—as long as the Red Rooster trademark was not so famous that the blanket manufacturer could argue you are diluting its mark with your spirits.  The test is whether a consumer is likely to confuse you, your trademark or products with those of someone else who came first.  In deciding whether a proposed trademark is likely to cause confusion, the USPTO trademark examiners and other trademark attorneys consider

• the similarity of the trademarks,
• the similarity of the goods or services,
• where the products or services are being sold, and
• the sophistication of the relevant consumers.

The more closely aligned the two trademarks are when considering these factors, the more vulnerable the new trademark will be to attack by the earlier trademark owner.   If an earlier trademark owner thinks another business is infringing its trademark, it will typically threaten to sue the allegedly infringing trademark owner unless it stops using the similar or identical trademark.  If the earlier trademark owner registered its trademark with a state’s Secretary of State and/or the USPTO, the owner may seek an injunction to prevent the infringer from continuing to use the trademark.  The prior owner also may sue the infringer for any profits the infringer received selling under the trademark and any damages the owner suffered from the infringement.   If the court finds the infringer acted in bad faith, because it knew it was infringing someone else’s trademark when it adopted the mark, the court may treble the profits and damages and award reasonable attorneys’ fees to the earlier owner.   Even if the earlier owner did not register its trademark with the state or USPTO, the owner still may pursue its common law trademark rights against the infringer.

In order to minimize the risk of suit, you should have a professional conduct a trademark clearance search on your proposed trademark before you start printing labels for your bottles.  A trademark clearance search will give you an idea of whether anyone else is already using the trademark you like.  The cost and thoroughness of trademark clearance searches vary, so it’s best to consult with an attorney knowledgeable about trademark law to get an estimate for the type of search that would suit your needs.

Once you’ve decided upon a trademark and determined that it is available for your intended use, you should then consider registering your trademark with your state trademark registry and/or the USPTO.  Although common law trademark rights arise from your first use of your trademark in commerce, registered trademarks generally are easier to enforce. Registering your trademark with the state is usually inexpensive and fairly simple.  Registering your trademark with the USPTO is a bit more expensive and complicated, but depending on how long you intend to use the trademark and how far-reaching your intended market is, the advantages of obtaining a federal registration generally merit the extra effort and cost involved.  Again, it’s advisable to consult a trademark attorney to get a better sense of how to best protect your selected trademark.

So as the grapes ferment, the fire crackles, and you savor the fruits of your previous labor, apply the same care to your branding efforts as you do to your wine.