Trademark Protection for Alcohol Brands: How to Differentiate Similar Marks in the Same International Class

Narrowing the international class for your alcohol beverage brand, products, or services for which you seek trademark protection is a rather straightforward decision; it comes down to either international class 32 for beer or international class 33 for all other wine and spirits. But what about the description of goods and services? In order to define the scope of your trademark rights, the USPTO requires that you provide a description, or “identification” of the goods and services that the mark will be used on or in connection with. Trademark examiners are not only comparing the similarity of marks, but how the marks are used on the same or similar goods and services within the same or similar channels of trade. Thus, the description is important because the USPTO will use it to decide whether there is a conflict between two marks, or whether the specific goods or services descriptions are different enough to distinguish the two marks and their varying uses. In general, the USPTO has taken the position that all alcoholic beverages are related, and relatedness of products is a major factor in determining whether two trademarks conflict. However, a proper description of goods and services can sometimes differentiate two alcohol beverage marks registered in the same international class.

Many trademark applicants wish to obtain registration for goods and services in the broadest sense possible, with the hopes of securing the most protection for their mark. This technique may prove successful for applicants with a completely novel or fanciful mark in an alcohol related class, however, the chances of applying for a mark with absolutely no similar competing marks in the same international class is unlikely. Therefore, accurately describing the mark in a broad, but not overly broad way can overcome barriers to registration while affording the registrant a fair amount of protection. When deciding on a description of goods and services, the description should not merely repeat the title or heading of the international class you have chosen. For example, if your mark is for a brand of vodka, you would apply for the mark under international class 33, “alcohol beverages, except beer.” In the description, rather than repeating the class heading, you may want to provide more detail, such as “alcohol beverages, namely vodka.” You want use somewhat broad language, but not so broad that your application is denied. When the USPTO reviews your initial trademark application, the USPTO compares your mark to previously filed applications and registrations that are live. If your description is too broad, such as “alcohol beverages, except beer” the chances of a similar mark falling within that broad description are much higher than if you tailored your description to the specific goods and services that you are actually providing. On the other hand, if your description is too narrow, the USTPO might allow a subsequent trademark application to be registered which could potentially cause confusion among consumers.

The USPTO provides a listing of pre-approved descriptions, which can be found in the ID Manual. If you find a description provided in the ID Manual that accurately and completely describes the goods and/or services that you provide or intend to provide, life just became a whole lot easier. If you choose a pre-approved description from the ID Manual, there is no risk of objection by the USPTO since the description is already established. Application fees are also lower because the trademark examining attorney will not need to review that part of your application. However, many situations are not accurately covered by a pre-approved description in the ID Manual and will require the applicant to customize a goods and services description. Although you can attempt to write your own description, it is often challenging to draft a precise and complete identification of your services or goods. In this description, you must include information about what you will provide or sell in broad terms, but not so broad that your application is rejected. After filing the application, it is important to remember that you cannot amend the application to broaden the goods and services description. Further, the USPTO could reject your application if your description is not accurate.

Providing an accurate and complete description of goods services is a balancing act that can prove challenging, but may make the difference between application approval or denial and could impact the scope of protections once your mark is registered. Seeking legal guidance before applying for your trademark, especially if the mark is not inherently distinctive or fanciful, is strongly advised.

 

By Ashley Hanke, attorney with Malkin Law