Page 10 - Intellectual Property

S10 | MONDAY, MARCH 27, 2017 | Intellectual Property
| NYLJ.COM
What’s in a Name?
Trademark Law For the Family-Owned Winery
BY DANIEL B. MOAR
For family-owned wineries, their name can be everything. Family-owned wineries proudly promote their heritage and often multiple generations of ownership by brandishing their bottles with the family name. Signs for vine- yards and tasting rooms, along with marketing materials, prominently tout the family name to identify the winery and its products.
In many ways this has little difference than with other products. After all, many of the largest, most successful American busi- nesses use trademarks comprised of a family name—FORD, DELL, and McDONALD’S, just to name a few.
The propriety of using the family name as a trademark to promote a business is often taken as an article of faith. After all, if your family has operated a winery for many years, why wouldn’t you be allowed to use the family name as a trademark to identify your wine? The answer lies in the Lanham Act, the fed- eral statute that governs trademark law. As with many legal issues, there are no absolute answers as to whether a family name can be used or registered as a trademark.
Primarily Merely a Surname
As a starting point, the Lanham Act does not initially allow for the registration of a trademark that is “primarily merely a sur- name.” 15 U.S.C. §1052(e)(2). Whether a mark is “primarily merely a surname” depends on the primary signi cance of the mark as a whole to the purchasing public. Thus, some- one with the last name “Williams” would likely nd their name to be unregistrable, while someone with the last name “Bird” would not face this hurdle.
In determining whether a mark is “primarily merely a surname,” consideration is given to whether the mark is actually used by others as a surname, whether anyone connected with the applicant uses the mark as a surname, whether the mark has meanings other than as a surname, and whether the mark has a look and sound of a surname. Dictionaries and telephone directo- ries are frequently consulted. Where the mark appears in a dictionary as a common word, such as “bird,” it is likely to not be deemed primarily merely a surname. In contrast, if a mark appears frequently as a last name in a telephone direc- tory, it is more likely to be deemed a surname.
However, even a rare name can be pri- marily a surname under the right circum- stances. For example, the mark DOURTHE for French wine was deemed primarily merely a surname because the family-owned winery issued advertising promoting that “Dourthe” was a wine-making family. Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole De Bordeaux Ed De La Gironde, 6 U.S.P..Q.2d 1205 (T.T.A.B. 1988).
Secondary Meaning
Notwithstanding the above, if a mark is deemed “primarily a surname,” it can still
DANIEL B. MOAR is a partner of Goldberg Segalla in Bu alo, where he practices in the intellectual prop- erty law group.
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