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Blog

Distillations: A Place Where Everybody Knows Your Name

March 28, 2017

Blog

Distillations: A Place Where Everybody Knows Your Name

March 28, 2017

Back to Fish's Trademark and Copyright Blog

 

Today’s upstart craft brewer/distiller/vintner might naturally want to name her new creation (whether the name of the company itself or a distinct product) after herself.  The existence of brands such as GALLO, BUSCH, FOSTER’S and GUINNESS shows that the use of surnames as brand is a far from new thing in the beverage industry.

However, surnames that have been in use as trademarks for decades or centuries are one thing, and newly-minted surname brands are quite another—as some recent cases from the Trademark Trial & Appeal Board demonstrate.

In early March 2017, the Board issued its decision in the case In re Detroit Rivertown Brewing Company LLC (Serial No. 86669897), affirming the Patent & Trademark Office’s refusal to register the mark ATWATER SPIRITS for distilled spirits, on the grounds that the mark is primarily merely a surname.

Section 2(e)(4) of the Trademark Act bars registration of marks that are primarily surnames.  The rationale behind this rule is that it would be unfair and anticompetitive to let one person monopolize their name and prevent others who happen to have the same name from trading in the same field.  An exception to this rule permits registration if the applicant can show that the mark has been in extensive use for a prolonged period of time, such that the public has come to recognize it primarily as a brand and no longer as a surname.  (This is how BUSCH and the other well-known surname brands enjoy legal protections now – they had to earn their brand status in the marketplace first.)

In this case the Board considered the evidence: over 5,000 listings for Atwaters in whitepages.com; numerous articles and online reference to the late political figure Lee Atwater; and virtually no evidence that “Atwater” has any meaning or use other than that of a surname.  (The Applicant apparently did not make much of the fact that its brewpub is located near Atwater Street in Detroit – perhaps because geographic marks carry their own drawbacks.)  On that record, the Board concluded that the mark was primarily a surname – notwithstanding the addition of the generic term SPIRITS.

This ruling follows a similar decision in September 2016 in In re Mischief Brewing Company LLC (Serial No. 86311033), affirming the rejection of RICHTER for beer, finding that the surname significance of Richter outweighed the seismological “Richter Scale” meaning (which is itself derived from a surname).  A few years earlier, another applicant, Perry David Merlo (Serial No. 85510114) similarly failed to register MERLO’S MERLOT for wine; the Board held that the rhyming aspect of the mark did not change the fact that Merlo was a surname – indeed the Applicant’s own surname.

So new beverage businesses should think twice about launching a brand built around a founder’s name.  If you have your heart set on putting your name on your business or product, then pair it with another highly distinctive word that will de-emphasize the surname significance – generic terms like SPIRITS and MERLOT won’t be enough.

Blog Authors

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Robert M. O'Connell, Jr. | Of Counsel

Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and protection of...

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