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Author Topic: Er... trademarking Gin, internationally  (Read 677 times)

blackrice

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Er... trademarking Gin, internationally
« on: 03-10-17 at 05:04 pm »

I'm an expat based in Thailand.

I'm starting a small craft gin distillery. I will sell regionally but would like to have the option to sell via internet to US and EU. So I'm looking at TM requirements.

Let's call my brand 'Hot Rod Gin'

Hot Rod is a common word, when I search the TESS database I see a number of 'Hot Rod' TM:

1. Hot Rod TM: sell herbal teas
2. Hot Rod TM: is a cooperative for car artists

They both have TM.. The herbal tea company is in active legal action with the cooperative.. ouch.

I guess hypothetically I could seek a TM for 'Hot Rod' under 'liquors' - but I'm sure I would get a fight.


Would I be better off to try to TM something like:

Hot Rod Gin
Hot Rod Distillery
Hot Rod Spirits

Or in a pinch, I could go with something horrible like 'Thai Hot Rod Distillery' or 'Asian Hot Rod Spirits'

I mean, something specific? Should I trademark in US or every country I plan to sell? (that would bankrupt me).

Stuck, eyes bleeding and head about to explode. I don't want to waste my dosh on the application.

Hot Rod Distillery or Hot Rod gin is my first choice

Thanks for any / all replies..
« Last Edit: 03-10-17 at 05:20 pm by blackrice »
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mersenne

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Re: Er... trademarking Gin, internationally
« Reply #1 on: 03-10-17 at 10:39 pm »

IANYL, TINLA.

I would not expect too much trouble from the trademark examiner over "Hot Rod" for car artists.  The "Hot Rod Teas" is slightly closer, but really not all that much.  If neither trademark owner objects, your application might go through OK.  (If either one -- or somebody else -- does object, you'll have a fight on your hands, which you may not be able to afford, or may not want to spend money fighting.  But that can happen no matter what name you pick, so if there are no knock-outs in the USPTO databases, I'd say go with the name you like!)
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Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

blackrice

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Re: Er... trademarking Gin, internationally
« Reply #2 on: 03-11-17 at 02:08 am »

I think I asked too many questions.

Let's dial it back.

There are currently 4 TM given for:

'Hot Rod'

1. protein-based or granola-based meal replacement bars for medical purposes
2. Australian red table wine excluding tea or herbal tea flavored wine
3. dietary and nutritional supplements in the nature of [ heral ] * herbal * teas
4. Herb Tea

So, I'm afraid if I go after:

'Hot Rod' TM

5. distillery of spirits (gin, vodka, whiskey) excluding wine, tea, dietary supplements and meal replacement bars

I might still get pushback.

If instead I go for a different Trademark:

Hot Rod Distillery
or
Hot Rod Spirits

Will that give me more protection?
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mersenne

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Re: Er... trademarking Gin, internationally
« Reply #3 on: 03-11-17 at 02:47 am »

You've got two questions going on: "can you register a trademark", and "what will the trademark protect?"

You can register marks that are not confusingly similar to existing marks (in the opinion of the trademark examiner, and of any anybody else who notices that you're trying to register something).  You can protect your mark against people who are too similar to your mark (in your opinion, provided that you can convince a judge or jury that your opinion is right).

Since you don't have a trademark going at all yet (apparently), your main concern is probably "can I register this mark?"  If you're up against cars and herbal tea, I think you have a fair shot.  Up against wine, maybe not.

Once you get the mark (if you do), you can protect it against people who make other spirits.  Can you protect it against somebody who wants to make "Hot Rod" socks?  Who knows?  Depends on relative wallet size, mainly.  (You'd probably need a pretty thick wallet to prevail against the socks guy, though.)
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Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

blackrice

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Re: Er... trademarking Gin, internationally
« Reply #4 on: 03-11-17 at 03:01 am »

Thanks for the response.

Sure, my competition for 'Hot Rod' would be the wine company. Tho they clearly state they're 1. Australian 2. make red table wine.

My company is Thai and I make 1. Gin 2. Vodka etc (no wine)

Still, I don't want hassles. So my questions really is:

Will adding a specific word after 'Hot Rod' give me any additional protection:

'Hot Rod Distillery' or 'Hot Rod Spirits'

Surely with common used words: 'Yellow Banana' is not the same as 'Yellow Banana Design' or 'Yellow Banana Airlines' ???
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mersenne

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Re: Er... trademarking Gin, internationally
« Reply #5 on: 03-11-17 at 11:00 am »

1. doesn't matter: you're trying to get a trademark in the US, where both companies will sell their products and consumers will see the trademarks.  The question is, will consumers who know Hot Rod Wine think that the same company makes Hot Rod Gin?  (Which is more or less your point 2.)

Adding some words may help sometimes, but it's not a guarantee.  For instance, if the wine company is just "Hot Rod," I'd expect the examiner to say that that company might very well diversify into distilled spirits, so your attempt to register "Hot Rod Spirits" or "Hot Rod Distillery" would be refused.

Wait, are you saying that you just found the Australian red wine company on the internet or something?  If they're not selling in the US and don't have a US trademark, they don't enter the picture at all.

On your "Yellow Banana" hypothetical, if the classes of goods/services are distinct, you probably wouldn't have to add the extra word anyway -- you could have a "Yellow Banana" design studio and a "Yellow Banana" airline.  (And "Yellow Banana" gin, too.)  It's up to the registrant whether to include the extra word in their trademark, but they'd have to be consistent about it, whichever way they picked.
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Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

blackrice

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Re: Er... trademarking Gin, internationally
« Reply #6 on: 03-11-17 at 03:27 pm »

1. doesn't matter: you're trying to get a trademark in the US, where both companies will sell their products and consumers will see the trademarks.  The question is, will consumers who know Hot Rod Wine think that the same company makes Hot Rod Gin?  (Which is more or less your point 2.)

Adding some words may help sometimes, but it's not a guarantee.  For instance, if the wine company is just "Hot Rod," I'd expect the examiner to say that that company might very well diversify into distilled spirits, so your attempt to register "Hot Rod Spirits" or "Hot Rod Distillery" would be refused.

Wait, are you saying that you just found the Australian red wine company on the internet or something?  If they're not selling in the US and don't have a US trademark, they don't enter the picture at all.

On your "Yellow Banana" hypothetical, if the classes of goods/services are distinct, you probably wouldn't have to add the extra word anyway -- you could have a "Yellow Banana" design studio and a "Yellow Banana" airline.  (And "Yellow Banana" gin, too.)  It's up to the registrant whether to include the extra word in their trademark, but they'd have to be consistent about it, whichever way they picked.

Currently there are 4 live TM for Hot Rod.

The first was the tea company. They've gone after other 'Hot Rod' TM as well, even if in a different class.

Yes there is a Hot Rod TM wine company based in Australia, with a US TM as well. You'll note in their description they're pretty careful:
"Australian red table wine excluding tea or herbal tea flavored wine"

They're trying to stay clear of the tea company.
But in a way they're also limiting themselves? They clearly state they make red wine.

I'm in the gin business. Of course I till wouldn't go after 'Hot Rod' TM because just too much trouble.

'Hot Rod Distillery'
Asian based distillery of Gin excluding wine, tea, dietary supplements and meal replacement bars

That would seem to cover me? But that's why I'm asking.

there's a gin called 'Monkey 47' (out of Germany with a US TM) there are a ton of 'Monkey' TM out there.

I could add a number to mine (Hot Rod 11) - but this seems silly.. why is adding a number any different than adding a descriptor - like Hot Rod Gin?
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mersenne

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Re: Er... trademarking Gin, internationally
« Reply #7 on: 03-11-17 at 04:24 pm »

Currently there are 4 live TM for Hot Rod.

The first was the tea company. They've gone after other 'Hot Rod' TM as well, even if in a different class.

Yes there is a Hot Rod TM wine company based in Australia, with a US TM as well. You'll note in their description they're pretty careful:
"Australian red table wine excluding tea or herbal tea flavored wine"

They're trying to stay clear of the tea company.
But in a way they're also limiting themselves? They clearly state they make red wine.

I don't think you can reliably get around a known mark merely by excluding their product from your class of goods.  What you're seeing may be the result of an agreement between the parties coming out of an opposition proceeding.  You can find out a lot more about what happened by reading the file histories -- look at the "TSDR" link in TESS.

I think adding a number is slightly better than adding the name of the product because the number is more likely to be perceived as part of the brand name, rather than just saying what the product is.

The large number of other "XYZ" brands for various things means a couple of things: first, you may have an easier time registering "XYZ" for your product, because people already know that XYZ shoes are made by somebody different from XYZ yogurt or XYZ tennis rackets.  But it also means that it won't be as distinctive for you, because there are a bunch of XYZs out there that aren't you.

(I'm assuming that your use of HOT ROD is a hypothetical.  There are a ton of HOT ROD results in a quick search.  So this is a problem with a hypothetical: a lot of what happens and what you can expect depends on what has happened in the past, and among whom.  You may be able to predict what will happen to you better if you look into what happened to the people before you.)
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Mersenne Law
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California, Oregon & USPTO

BobRoberts

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Re: Er... trademarking Gin, internationally
« Reply #8 on: 03-11-17 at 05:44 pm »

As likelihood of confusion is about public perception, then the wine company seems, to me, to be a real problem because wine is so closely-related to gin, sold on the same area of a store, seen in identical channels of trade, and has a dominant portion that is identical to that of wine. 
To Mersenne's point about additional words vs. numbers, a descriptive element (like spirits or distillery) is much less distinguishing than even a number (as Mersemme pointed out may be perceived as an important element of the mark that could take some dominance away from the "Hot Rod.")  To me, a number would still not help you, but really depends on the specifics about what else is out there.  Still seems like a problem to me on a cursory examination, that wouldn't be solved with a descriptive element. 

Now, if you added a phrase that would change the perception or dominance of "Hot Rod," like "Hot Rod Sludgefest of the Shining Seas", it may change the perception in a consumer's mind (make "Hot Rod" less dominant?) and perhaps be easier to convince an Examiner that confusion is less likely.  As I'm sure you know, Trademark and likelihood of Confusion is very situation specific...

Mersemme provided a lot of great thoughts and considerations...
 
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blackrice

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Re: Er... trademarking Gin, internationally
« Reply #9 on: 03-13-17 at 10:37 am »


I don't think you can reliably get around a known mark merely by excluding their product from your class of goods.  What you're seeing may be the result of an agreement between the parties coming out of an opposition proceeding.  You can find out a lot more about what happened by reading the file histories -- look at the "TSDR" link in TESS.

I think adding a number is slightly better than adding the name of the product because the number is more likely to be perceived as part of the brand name, rather than just saying what the product is.

The large number of other "XYZ" brands for various things means a couple of things: first, you may have an easier time registering "XYZ" for your product, because people already know that XYZ shoes are made by somebody different from XYZ yogurt or XYZ tennis rackets.  But it also means that it won't be as distinctive for you, because there are a bunch of XYZs out there that aren't you.

(I'm assuming that your use of HOT ROD is a hypothetical.  There are a ton of HOT ROD results in a quick search.  So this is a problem with a hypothetical: a lot of what happens and what you can expect depends on what has happened in the past, and among whom.  You may be able to predict what will happen to you better if you look into what happened to the people before you.)

Wow. Thanks.

Yeah, 'hot rod' is not the brand. But similar.

I think what I'm hearing is that:

'Hot Rod Distillery' may not be significantly different enough from Hot Rod - in the mind of consumers it may be related.

I'd like to use:

'Hot Rod 11' - that seems like a unique brand to me. However I could also reverse it to:
'11 Hot Rod' - and thus I think not even be related?

'Monkey 47' is a brand of Gin - surely they couldn't get 'Monkey' as a TM

So frustrating.
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