With media costs inhibiting individual brand advertising, there is a trend towards firms putting more emphasis on corporate branding, stressing the company as the brand through corporate identity programmers. In this way functional aspects of individual brands in the firm’s portfolio can be augmented, enabling consumers to select’ brands through an assessment of the values of competing firms.
Corporate branding is based on a well-devised corporate identity program which provides a clear vision about how the firm’s brands are going to make the world a better place, has a well-thought set of core values, is communicate to staff and which gives them a better feeling of involvement and belonging. Well-devised programmers endanger pride amongst staff that becomes even more committed to working hard in order to play their role in delivering brand benefits. Once a firm has undertaken an audit to understand how it is perceived by its different stake holder groups and has clarified its values and its vision for a better world, it can then start to consider the most appropriate brand architecture.
Protecting any given brand often boils down to the following – you can either spend a couple thousand dollars early in the process to adequately protect your brand, or risk spending several times that amount in both time and money to deal with a conflict in the future. Worse yet, the future conflict may result in the loss of your brand.
Conflict with Someone Else’s Brand – The most common problem encountered with a wine brand is a conflict with someone else’s brand. New wine brands often run into conflict with established brands. The converse is also true; owners of established wine brands often encounter others trying to develop or make use of similar brands. In either event, these brand conflicts can be expensive, time consuming, and distract from other aspects of the business.
Because of this, brand owners should do all they can to minimize the possibility of a conflict with someone else’s brand, both while they are in the process of deciding on a new brand, as well as throughout the use and exploitation of the brand.
Avoid Adopting Potentially Troublesome Brands – Clients are often emotionally attached to the potential brand names they provide to their attorneys for search and clearance. Even when potential conflicts arise in the search or clearance process, clients often still want to pursue the proposed brands. This is more often than not a costly mistake. Pursuing a brand with potential conflict or protection problems associated with it from the outset rarely produces the desired consequences. Clients will typically spend much time and money either attempting to work out a conflict with someone else’s mark or trying, often in vain, to protect the brand through trademark registration, only to ultimately find they cannot do so.
If you have not yet begun using a brand and potential conflicts are discovered in the clearance process, you are most likely better served choosing another brand. If you have already adopted and are using a brand when a potential conflict arises, the considerations are different as you obviously do not want to change your recognized brand unless you absolutely have to.
However, if you have not yet begun use of your brand and a potential conflict arises, you have to ask yourself how difficult or damaging it really would be to pick a new brand given that you have not yet invested a significant amount of time and money in developing the brand. Though it takes time and money to come up with potential brand names, the investment is well worth the cost if it allows you to avoid brand conflicts down the road. Brands that are free of potential conflicts from the start are easier to protect and allow you to focus your time and money on building brand awareness rather than defending troublesome brands or spinning your wheels trying to obtain trademark registrations for such brands.
If you spend the necessary time and money to adequately protect your brand from the outset, you do not have to do it over and over again in the future. As stated before; you can either spend a little now or risk spending a lot later.
Perform Your Own Initial Searching – Before you invest time and money in a brand, or even in lawyers to help you clear a brand, you can easily and quickly perform some of your own initial clearance searching on your proposed wine brand. By performing these initial searches you can often quickly eliminate potentially troublesome names and avoid delays and costs associated with having lawyers perform the initial searching for you.
Most of these initial screening searches can be performed for free on the Internet. Internet sites that are helpful for searching include USPTO Trademark Database, TTB Online COLA Database, Basic Search Engines and Wine-Specific Search Engines
The United States Patent & Trademark Office (USPTO) Trademark Database
The USPTO maintains a free searchable trademark database for all federal trademark registrations and pending trademark applications. You can easily enter your proposed brand names into this database and check to see whether anyone else has filed for protection of the same name or a similar name for wine. You should also conduct this search among other related goods or services that the PTO considers confusingly similar to wine, such as other alcoholic beverages (e.g., “beer” or “whiskey”) or related services such as “restaurant services.”
If someone has filed a trademark application on a brand name, that application or registration is a fairly good indicator that they believe the brand is worth protecting. It is also a good indication that your brand could have potential conflicts. Thus, you should think long and hard before pursuing a name someone else has protected or is trying to protect as a trademark.
Once you become familiar with the USPTO Trademark Database, you can further refine or tailor your search to suit your specific needs. For example, you can perform a broad search of all filed trademarks across all goods and services, or you can tailor your search to look for only trademarks that have key words such as “wine” in their goods or services descriptions, or for trademarks that fall within International Class 33, the class in which all wine and spirits marks are registered.
Alcohol and Tobacco Tax & Trade Bureau (TTB)’s Online COLA Database
Another very helpful free online database is the TTB’s online Certificate of Label Approval (COLA) database. The TTB was recently spun out of ATF which is why many know of and still refer to this database as the ATF’s COLA database.
This database contains records of all COLAs granted by the federal government since 1996. The database is by no means comprehensive of all existing COLAs, but it does provide an easy first step to check whether someone else is already using your proposed name as a brand for wine.
Searching the COLA database is easy. In the online form, you simply fill in the blanks for the categories on which you want to search. The most useful search category for clearing proposed brand names is the “Inclusive Name Search”. The Inclusive Search will pull up any matching records whether the name is part of the brand, the winery or the COLA registrant (e.g., the bottling winery).
The COLA database can be misleading as to who is using what brands. COLAs list the name of the bottling winery as the COLA “Applicant”, which is often not the actual owner of the brand. However, the usefulness of the COLA database lies in finding matching records, not necessarily determining who actually owns the brand. Matching records indicate a brand with a potential conflict.
The database does, however, provide other useful and specific information, such as the “Class/Type Code” that tells you whether the COLA is for beer (class 901), whiskey (class 100), table red and rose wine (class 80), and so on. If you become familiar with these codes, you can often gain valuable additional information about other’s use of potentially conflicting brands, such as whether someone is using a brand for beer or for wine or for something else.
Search Engines (e.g., Google.com)
Although you can rarely, if ever, rely on completeness of results produced from any Internet search engine, it is very easy to perform a search of your proposed brands (or existing brands) and see whether any wine-related “hits” are found.
To minimize matches with completely unrelated industries (computer companies, clothing manufacturers, and whatever else may be on the web that has nothing to do with wine) you can tailor your search to look, for example, for your brand used in connection with common wine brand suffixes such as “… Cellars”, “… Winery”, “… Wines” or “… Vineyard.”
To better focus the search, put quotation marks around your brand and the suffix of choice, e.g., “Your Brand Cellars.” For most Internet search engines, this will limit the search to only those results that use the quoted phrase together. Otherwise, for example, every website containing simply “Cellars” can result.
There is a wealth of information readily and freely available on the Internet. Often times, when I am looking for a potential conflicting brand on behalf of a client, I easily stumble upon an entire website describing everything I could ever want to know about their wines, their winery, their family history, the names of their pets, and so on. To not take advantage of this extraordinary resource is to do your business a disservice.
Wine-Related Website Databases (e.g., Wine- Searcher.com)
In addition to using generic search engines to help clear proposed brands, online wine-specific databases can be of assistance, especially if you are trying to locate a brand that you think may already exist.
WineSearcher.com is an example of such an online wine- specific database. This website is a worldwide database of where wines are available for sale. For instance, you can search for all places (in the database) where a particular brand in a particular year is sold in the United States. Again, like many other Internet databases, especially free Internet databases, the results are by no means comprehensive. Although this database is most useful for locating a wine brand that you know or think already exists, it is also useful a useful tool for clearing proposed names.
Although many wine brands are protected as registered trademarks (and therefore will show up in trademark searches), a majority of existing wine brands are not protected as registered trademarks and therefore will not show up in trademark searches.
Despite the fact an existing wine brand is not registered as a trademark, the brand has trademark rights on account of the brand’s use in commerce. Rights in a trademark come from use of the trademark in commerce, not registration.
