By Chuck Knull
Before a brewer, winemaker or a distiller can put its product into kegs, cask, bottles, cans or boxes, the labels that it will stick on the packaging (including labels on imported product) must be approved by the Alcohol and Tobacco Tax and Trade Bureau (TTB). The approval is called a Certificate of Label Approval (COLA). Many brewers, winemakers, distillers, and importers mistakenly believe that the COLA has the same or similar importance to a U.S. trademark registration in terms of securing brand protection and/or clearing them from infringing other people’s trademark rights. They couldn’t be more wrong.
When the TTB looks at COLA applications, one of the things it reviews is the brand name, i.e., the trademark. If there is an exact match for the brand name for already approved product by another then the COLA may be denied. That is, if the TTB, which examines about 100,000 COLA applications a year, does not miss the duplication. Or not see the duplication as a problem because for it, the products are not the same. A number of years ago, the owner of the mark BLACK & WHITE for whiskey had to sue a brewer who had come out with BLACK & WHITE for beer, And Remy Martin, with its REMY mark for Cognac, had a trademark battle with a wine called F. REMY. The fact that all the products had approved COLAs did not help the two brands which were the latecomers.
If there is no match for the brand name, and the COLA is approved, the brewer, winemaker or distiller should not even think for a moment that it has a clear brand name/trademark for its product. A COLA approval is not a trademark clearance. The fact that a COLA application is made and approved is, of course, great evidence that the applicant has a bona fide intention to use the trademark, but that will not be enough to carry the day if there is use or even a prior, bona fide intention to use, the same of similar mark.
This is because trademark law does not work only on exact matches of terms in a given mark. Trademark infringement happens when there is likelihood of confusion. Under the criteria for finding likelihood of confusion, trademarks for soft drinks, restaurants, and cheese, to name a few, have caused problems for marks for alcoholic beverages. I have had the experience of representing the makers of MURPHY’S IRISH STOUT, which of course, had a number of approved COLAs for its brands and container labeling and had been brewing since 1856, when a restaurant named Murphy’s tried to cancel its US trademark registrations. There are legions of other such cases. The owner of the BOAR’S HEAD trademark for meats had to sue a brewer who came out with BOAR’S HEAD beer,. The owner of BLACK LABEL for beer had to litigation against a cigarette maker that came out with BLACK LABEL cigarettes.
The only way to assure trademark clearance is to obtain a full clearance trademark search which, after analysis, shows no blocking trademarks in use.