They say you can’t run away from your past, it will eventually catch up to you. Sazerac Brands may have just learned that lesson the hard way, thanks to the Sixth Circuit Court of Appeals.

Sazerac Brands owns rights in the OLD TAYLOR and COLONEL E.H. TAYLOR brands of whiskey (distilled at Sazerac’s Buffalo Trace distillery). It isn’t surprising, then, that Sazerac was not pleased when a new company, Peristyle, began using “Old Taylor” to refer to its in-development distillery in social media and in the press. Sazerac sued Peristyle for trademark infringement, resulting in a multi-year legal battle that ended earlier this month with the Sixth Circuit’s ruling (probably, pending further review).

But back to the history lesson. In 1887, Colonel Edmond Haynes Taylor, Jr.  built the Old Taylor Distillery in Kentucky, one of the most prolific distilleries of its time. It was more like the destination breweries you see today: it was a castle with gardens, pools, turrets, pergolas, and other embellishments that were uncommon at the time.

Prohibition came and sales disappeared. The distillery and the brand changed hands multiple times after World War II. Ultimately, the distillery was shut down in 1972, but Old Taylor brand whiskey continued. Most recently, the rights to the brand were purchased by Sazerac in 2009. The actual distillery became abandoned and run-down. Nature and vandals took their toll, even on the once picturesque pool (seen below, or here for more photos).

It remained this way until 2014, when Peristyle purchased the land with the intent of renovating the grounds and buildings for a new brand of whiskey. However, at the time of renovation, Peristyle had not yet decided on a new name and instead referred to the location as “the Former Old Taylor Distillery” or simply “Old Taylor.” Even though the distillery had been shut down for more than forty years, there was still a 400 foot “Old Taylor Distillery” sign on a warehouse and a “The Old Taylor Distillery Company” sign located at building’s main entrance.

Peristyle informed Sazerac that it intended to market its spirits under a different name than Old Taylor. Yet Sazerac pressed forward with its claims, even after Peristyle announced that its products would be marketed under the brand Castle & Key. Part of Sazerac’s concerns stemmed from Peristyle’s intent to keep the Old Taylor signs on its distillery and the “Old Taylor” name as well as continued references to Old Taylor in marketing and in the press for Castle & Key.

The Sixth Circuit affirmed the district court’s grant of summary judgment to Peristyle, concluding that Peristyle’s display and usage constituted fair use of the Old Taylor trademark. The court reasoned that Peristyle’s use of the name was historical in nature, describing the origins of the distillery and its physical location. After all, the court noted, the building is listed as the “Old Taylor Distillery” on the National Register of Historic Places.

It’s difficult to fault Sazerac for being concerned by Peristyle’s conduct, at least initially. But the court’s decision provides a lesson beyond history: owners of brands with a long lifespan should carefully consider the context in which a third-party is “using” their mark and whether fair use may apply.

Pisco is a light-colored brandy traditionally produced in portions of Peru and Chile.  One brand that offers this product in the United States is PISCO PORTÓN (the latter word meaning “gate” in Spanish).

duetsblog_piscoporton

Pisco Porton has a number of registrations including PORTÓN, PISCO PORTON, and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO.

The owners of PATRON challenged these registrations, first petitioning to cancel PORTÓN in 2014.  The owners surprisingly didn’t attempt to cancel PISCO PORTON and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO at the same time, but waited until August 2016 to petition to cancel these – despite these being registered before PORTÓN.

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In deciding to cancel the mark, the TTAB went through the typical analysis of the “likelihood of confusion” factors:   the goods “distilled spirits” were identical in both registrations; pisco and tequila are offered in similar retail environments to the same or similar mark; the marks were similar in sight & sound; and the PATRON mark has developed some fame.  The decision here to cancel the PORTÓN mark is not surprising, especially to those of us following trends in this industry.

However, the Board’s decision includes a few points that breweries, wineries, and distilleries ought to consider in their brand management.  First, the Board did not find that PATRON’s claims were barred by laches based on PATRON’s about 2+ year delay following registration before filing the cancellation proceeding.  Companies should be mindful of the potential impact of delay on enforcing a registration against a third party under this theory known as laches.  Second, the Board went into a relatively lengthy discussion on the admissibility of an article  that included quotes from Pisco Porton’s General Manager and Master Distiller made during an interview in London.  He was quoted as saying “sometimes people get PORTÓN confused with PATRON Tequila, which can be a good thing for us” and “[the] names might be similar.”  Since these quotes were from an interview in the UK, the Board found them to be not probative because they did not necessarily reflect sentiments about US consumer confusion.  However, this is an important point for breweries, wineries, and distilleries – as well as any marketer of any good – to consider the implications of public statements, comments made to journalists, or social media posts that may negatively affect their rights in a particular mark.

Now we will have to see how this decision impacts the protection for the remaining PISCO PORTON registrations.   Do you think that the decision will also result in the cancellation of the other PISCO PORTON registrations?

 

It’s rare that we focus on descriptions of goods or services here, but one of the most common reasons that a trademark for a brewery or winery is refused registration at the Trademark Office comes down to the description of services.  “Brewery services” and “winery services” are popular descriptions often used by new entities or producers who are in the planning stages.   The Trademark Office generally will only question the services once a specimen has been provided that does not clearly link the mark to brewing or making wine for others, rather than just for its own beer or wine.  The “brewery services” description was actually deleted from the Trademark Office’s Acceptable ID Manual in 2013, and replaced with “beer making and brewing services [for others]” as an acceptable description.  Certainly there are contract brewers and custom crush production facilities that make beer or wine for other breweries.  From what I heard at the Craft Brewers Conference earlier this month, we may begin seeing a trend towards consolidated production facilities.

When this refusal is made, the applicant who’s only making beer and wine for their own labels often finds themselves in a Catch-22:  they may be stuck with the services shown on the submitted specimen or at least what was available as of the filing date of the specimen.  Clever and creative amendments to the description of services can help salvage such applications from the perils of these requirements.

To determine what constitutes a “service,” the Trademark Office has established the following criteria:

(1) it must be a real activity;

(2) it must be performed to the order of, or for the benefit of, someone other than the applicant; and

(3) it must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

Another “service” often mentioned in applications of late involves a claim for “social networking services” where the applicant has provided a screenshot of their Facebook(R) page or a Twitter(R) feed to show use.   In a recent TTAB decision involving the florist FTD, the Board determined that merely using a social networking page as advertising for its own benefit and therefore does not amount to providing “social networking” services for others.   In a significant update to the Trademark Manual of Examining Procedure in April 2016, the Trademark Office added at TMEP 1301.04(h)(iv)(C):

Some applicants may mistakenly mischaracterize their services as “social networking” because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for “online social-networking services” and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social-networking services since it does not demonstrate that the applicant is providing these services.

Value is most often found in the performance of services for the benefit of another, and that’s true for trademarks, too.