BY J. Scott Gerien,
Dickenson, Peatman & Fogarty
In journalism, the five Ws who, what, where, when, and why
are the formula to deliver the full story. To present the
full story on wine, this formula also works on a wine label
style (what?), vintage (when?), taste (why?). The focus of this
article is on the who and the where, how
these factors inter-relate in the branding of wine, and how the
where as perceived on the label may or may not actually
reflect the origin of the wine.
A trademark, or a brand name, represents the who, the
source of the wine. A designation of origin represents the where,
which is the geographical origin of the wine. Seems straightforward,
right? Of course, it is not.
In many cases, the division between who and where is simple. RIDGE
is a brand name that represents the producer or the source of the
wine. RIDGE wines also feature various appellations of origin on
their labels depending upon where the grapes for the wine were grown
(Sonoma, Paso Robles, Howell Mountain, Santa Cruz Mountains) and
upon compliance with labeling rules for appellations of origin as
set forth by the Alcohol and Tobacco Tax and Trade Bureau (TTB).
Use of an appellation of origin on a label requires that the wine
be derived 75% from grapes from the appellation, and use of an American
Viticultural Area requires an 85% origin.
What happens when the brand name also contains a geographical term?
This is where things begin to unravel and the relevant laws can
create serious complications for the brand owner and for producers
and vineyard owners with interests in the use of a geographical
term as a designation of origin.
Descriptive use of geographical
terms in trademarks
The general rule under trademark law is that a geographical term
cannot be exclusively protected as part of a trademark if the geographical
term describes the origin of the goods and if consumers would associate
the goods under the mark with the place described in the mark. Put
another way Paso Robles for wine from Paso Robles could
not be protected as an exclusive trademark belonging to one party
because consumers would likely believe Paso Robles to
describe the origin of the wine.
That being said, a geographical designation may be protected as
part of a larger composite trademark for wine from the place identified,
such as GALLO OF SONOMA. But this does not confer any rights to
the term Sonoma. For instance, Gallo could not prevent
the use of the mark GENERATIONS OF SONOMA for wine from Sonoma County.
Thus, to adopt a mark that is primarily geographically descriptive,
a designation of origin combined with another non-distinctive or
generic term such as winery, cellars, or
red, for example, entails accepting the fact that you
will have a weak mark and will be unable to prevent others from
using the same geographical term in slightly different marks.
This issue arose recently when Santa Barbara Winery complained that
Bronco Wine Company adopted the mark SANTA BARBARA LANDING in conjunction
with a label type font similar to that used on the SANTA BARBARA
Whether or not the claim of font similarity has any merit, a claim
of infringement is weakened by the fact that the primary point of
similarity between the two marks, Santa Barbara, cannot
be claimed exclusively by any party as a mark. Since Broncos
mark also uses a term different from winery in association
with Santa Barbara, there is an arguable point of distinction
between the marks. This limitation to protection is the risk one
assumes in adopting a geographically descriptive mark.
Sometimes, such risk is knowingly assumed between parties because
of the interest in using the geographical term. The Canoe Ridge
area in the Horse Heaven Hills AVA (Washington state) has vineyards
owned by Chateau Ste. Michelle and Chalone. By mutual agreement
Chateau Ste. Michelle uses the mark CANOE RIDGE ESTATE for wine
produced from its vineyard, while Chalone uses the mark CANOE RIDGE
VINEYARD (winery in Walla Walla, WA).
The term Canoe Ridge describes a geographical
area where our red wine facility and vineyard is located,
explains Lynda Eller, Communications Manager, Chateau Ste. Michelle
(Woodinville, WA). Chateau Ste. Michelle uses Canoe
Ridge Estate as a vineyard designation and Chalone uses Canoe
Ridge as a brand name.
While the similarity of Canoe Ridge in both marks probably
leads to some confusion, presumably the value of the geographical
significance of Canoe Ridge is sufficiently important for both parties
to use it in their respective marks despite the potential risk of
Where a mark is found to be geographically descriptive of the origin
of the goods, however, it may nonetheless still be registered and
protected as a trademark where it can be shown to have been exclusively
used over time and to have attained a secondary meaning as a trademark
in the minds of consumers, as opposed to a designation of origin.
For example, even though the term California is geographically
descriptive for wine coolers and cooler is generic for
wine coolers, the term CALIFORNIA COOLER was found to be protectable
based on the secondary meaning the composite had acquired as a trademark
in the minds of consumers. Thus, the owner of the CALIFORNIA COOLER
mark was allowed to prevent others from using the combined descriptive
and generic terms CALIFORNIA COOLER due to this acquired distinctiveness.
However, this is the exception and secondary meaning is generally
not easily attained for geographically descriptive marks.
Finally, if a mark contains a geographical term and the wine originates
in the place identified by the term, but the primary significance
of the term to the general public is not geographical, then the
term may be registered as a trademark for exclusive protection.
An example of such a mark is JAMIESON CANYON, which functions as
a wine brand for Kirkland Ranch (Napa, CA). Because the term is
not generally used or known to the public as a designation of origin
for wine, it has been registered as an exclusively protectable trademark.
Deceptive and geographically
misdescriptive use of
On the opposite side of the trademark coin from geographical descriptiveness
are the issues of geographical deceptiveness and geographical misdescriptiveness,
both of which are judged by the same legal standard. A mark is found
to be geographically- deceptive or geographically misdescriptive
when it consists of a geographical term and is used on a product
not from the place identified by the term, such that consumers would
purchase the product based on the misbelief that the product was
from the area identified.
Where a trademark is found to be deceptive or geographically misdescriptive,
it cannot be registered. The trademark CALOGNAC for brandy not from
Cognac was denied registration based on a finding of geographic
deceptiveness, as it was held consumers would be misled into believing
the brandy identified was a certified brandy from the Cognac region
If a mark is found to be deceptive as to origin, it may also be
enjoined from being used pursuant to false advertising and unfair
competition laws. The marks HOUSE OF STUART BLENDED SCOTCH WHISKEY
and LOCH-A-MOOR were enjoined for use on a whiskey-based product
produced with non-Scotch whiskey outside of Scotland, due to their
The deceptive use of geographical terms on wine labels came into
sharp focus recently with the final resolution of the Bronco
v. Jolly case wherein Bronco Wine Company challenged the constitutionality
of a California law requiring that any wine label featuring the
term Napa (other than as part of the required city name
for the production location for the wine), or any sub-appellations
located within Napa County, be derived 75% or more from grapes grown
in Napa County, California. The California Supreme Court held this
consumer protection law to be constitutionally valid, and this decision
was upheld by the U.S. Supreme Court. Shortly thereafter, a second
California law was passed with similar requirements for the use
of Sonoma on wine labels.
One may ask, however, why such a law was necessary
when federal law already prohibits the deceptive use of geographical
terms and federal labeling law requires that wine labeled with a
recognized appellation or American Viticultural Area (AVA) be derived
75% or more from the appellation, or 85% or more from the AVA identified.
Turning first to the federal labeling law, the California statute
was necessary to close a loophole in the federal law. In enacting
the federal law recognizing appellations and AVAs, a grandfather
provision was simultaneously enacted. The grandfather provision
applied if a brand name encompassed a subsequently recognized appellation
or AVA and was the subject of a Certificate of Label Approval (COLA)
issued prior to 1986. In that case, the brand name could continue
to be used on wine not produced from grapes originating in the particular
appellation or AVA identified in the brand name, so long as the
true origin of the grapes was also identified on the label.
For several years, this grandfather provision was a non-issue. Most
wineries with geographical brand names continued to use those brand
names only for wines derived from grapes from the place identified
in the brand name, or only for small production of wine made from
grapes originating outside of the place identified in the grandfathered
However, this situation changed dramatically when certain grandfathered
COLAs were sold and the geographical brand names in those COLAs
were then used for large-volume production of wine made from grapes
grown in regions other than those identified in the grandfathered
geographical brand name.
In the case of Napa geographical brand names, evidence
indicated that the use of these brand names on wine not from Napa
County was deceptive to consumers. For instance, the California
Supreme Court found that even though NAPA RIDGE wine made from grapes
grown outside of Napa County carried the true geographic origin
of the wine, such as California or Lodi,
this was not sufficient to prevent consumer deception.
In light of this shortcoming in the labeling law, such deception
could have been addressed on a case-by-case basis pursuant to misleading
advertising and unfair business practices laws. However, under the
California law, the California Department of Alcohol Beverage Control
was charged with the obligation to prevent the deceptive use of
Napa on wine, much like the TTB under the federal labeling
laws. Thus, the benefit of the California Napa and Sonoma labeling
laws relative to the false advertising laws is that it eliminates
the need for costly, private case-by-case lawsuits against deceptive
uses of Napa. The duty to police proper use and enforce
the law falls to the government.
With the Supreme Court affirmance of the constitutionality of California
labeling laws, every wine carrying the term Napa or Sonoma produced
or sold in California must comply with federal labeling laws for
these counties, regardless of the grandfather provision contained
in the federal labeling laws. Thus, brands such as Sonoma Creek,
which previously produced wines from non-Sonoma grapes under the
SONOMA CREEK mark, can no longer produce or sell such wine under
California laws specifically protecting Napa and Sonoma, however,
are fairly unique. They are also limited to the production, advertising,
and sale of wine occurring within the borders of the state of California.
The federal false advertising and unfair competition laws apply
more broadly to the deceptive use of any designation of origin and
cover acts occurring anywhere within the United States, and thus
are broader in the protections offered to designations of origin.
Nonetheless, the federal false advertising and unfair competition
laws generally must be enforced privately, and without enforcement,
these laws have no real practical effect.
From the perspective of a brand owner desiring to
use a geographical term in a brand name, the risk in doing so is
great. If the term is geographically descriptive, the brand owner
is faced with the protection problem faced by Santa Barbara Winery.
If the term is deceptive, the brand owner is faced with the larger
problem of losing rights in the mark and being enjoined from using
the mark going forward. In either scenario, the disincentive to
use of a geographical term in a brand name is obvious.
Pitfalls in recognition of new AVAs
Undoubtedly there is a marketing advantage to producing wine from
a recognized appellation or AVA. There is also the benefit of having
TTB undertake the responsibility of supervising proper, non-deceptive
use of the appellation or AVA where the grandfather rule does not
apply. As a result, many wineries are eager to have their regions
recognized as appellations, specifically as AVAs. However, with
such recognition comes potential risk, especially where the AVA
is also used in brand names.
For instance, CHALONE VINEYARD is a well-known wine brand, but Chalone
is also a recognized AVA. While Chalone Vineyard owns most of the
vineyards contained within the Chalone AVA, there are other vineyard
owners within the AVA, and wines are being produced and sold under
the Chalone AVA by producers other than Chalone Vineyard. Wines
labeled with the Chalone AVA include: A DONKEY AND GOAT, MICHAUD,
In properly using the recognized AVA of Chalone in the manner of
a designation of origin, these brands are acting in compliance with
the labeling laws. Thus, even in the event there was some consumer
confusion with Chalone Vineyard based on the use of this AVA by
these brands, which is certainly possible, Chalone Vineyard would
have great difficulty in taking any action to prevent the fair use
of the AVA by these brands.
If a new AVA is recognized and encompasses a producers brand
name, another problem may arise if the brand is not subject to the
grandfather provision of the federal labeling laws. Once an AVA
is established, any non-grandfathered brands containing the AVA
that may have legally used the brand name on wine from outside the
AVA must then only use that brand name on wine originating from
the new AVA.
Prior to the recognition of Rockpile as an AVA, under
the federal labeling laws various brands containing the term Rockpile
were free to include wine from larger appellations under their respective
labels. However, upon recognition of Rockpile as an AVA, those brands
were required to only use the respective Rockpile brand
names on wine derived 85% or more from grapes originating in the
Rockpile AVA. Thus, the recognition of an AVA can also have a limiting
consequence on owners of brands containing the AVA.
In some circumstances, this has been avoided. For
instance, in recognizing Chehalem Mountain as an AVA, the TTB held
that the term of viticultural significance was Chehalem
Mountain, not Chehalem standing alone. The effect
of this is that TTB will only deny or revoke a COLA where Chehalem
Mountain is being used on wine not derived 85% from the Chehalem
Mountain AVA, but not where the term Chehalem without
Mountain is being used on wine not derived 85% from
the Chehalem Mountain AVA.
As a result, TTB will not interfere with Chehalem
Wines continued use of the CHEHALEM mark on wine from outside
of the Chehalem Mountain AVA. In essence, even though CHEHALEM is
not a grandfathered brand, TTBs recognition of Chehalem
Mountain as the term of viticultural significance allows the
mark to function as if it were a grandfathered brand.
From an equitable perspective, this approach may seem fair as Chehalem
Wines (Newberg, OR) used its mark for 15 years before the AVA was
officially recognized. However, to the extent that the region had
any general recognition as an area for the production of wine before
Chehalem Wines began using its mark, the result may appear unjust,
since Chehalem is obviously the distinctive term in
both the trademark and AVA, and the term which will be remembered
by consumers. Thus, the recognition of the Chehalem Mountain
AVA would appear to have little value since under the TTB rules
anyone can use the term Chehalem without Mountain
on wine produced from grapes grown anywhere.
While Chehalem Wines might object to the use of Chehalem
as part of a brand by third parties, it might have little grounds
to do so where the term is used for wine actually from the Chehalem
Mountain AVA, such as a brand called Chehalem Landing
for wine from the Chehalem Mountain AVA. Furthermore, the TTB would
not weigh in one way or the other against any use of the term Chehalem
other than in the composite Chehalem Mountain.
Since TTB has opted not to prevent use of Chehalem by
itself or in combination with terms other than mountain
on wine not from the Chehalem Mountain AVA, growers and wineries
in the AVA would be forced to seek recourse pursuant to false advertising
and unfair competition laws if they believed use of Chehalem
on wine from outside the Chehalem Mountain AVA were deceptive.
Geographical designations that
have become generic
Some geographical terms have become generic identifiers for certain
styles of wine for example, champagne and port. Even though
Champagne identifies the Champagne region of France
and Port identifies the Oporto region of Portugal, to
American consumers, these terms mean sparkling wine
and sweet fortified wine. Therefore, American consumers
encountering these terms on wine products produced in the U.S. do
not view them as identifications of origin, but rather as generic
identifiers of style. As a result, use of these geographical terms
in a generic sense is not considered to be deceptive.
There is a caveat, however, concerning the use of generic terms
with European geographical significance. In 2006, the U.S. entered
the bilateral Wine Accords with the European Union, whereby the
U.S. agreed not to allow non-E.U. wines to use certain generic terms
with European geographical significance, such as Champagne and Port.
(The full list of covered terms is as follows: Burgundy,
Chablis, Champagne, Chianti, Claret, Haute Sauterne, Hock, Madeira,
Malaga, Marsala, Moselle, Port, Retsina, Rhine, Sauterne, Sherry,
and Tokay). This treaty was enacted in the U.S. in December 2006
with an effective date of March 2006.
Accordingly, the aforementioned generic terms may no longer be used
on wine by American producers unless a producer owns a COLA issued
prior to March 10, 2006 for use of the generic term in association
with a particular brand name and fanciful name. If a producer owns
such a COLA, it is grandfathered and may continue to use the generic
term in association with the brand name and fanciful name identified
in the pre-March 10, 2006 COLA, such as Gallo Hearty Burgundy. Absent
such exception, however, American producers are banned from the
continued use of these previously generic terms.
The law concerning the use of geographical terms on wine labels
is complex and convoluted. The best course of action for a producer
is to adopt a brand name with no geographical significance, and
to only use geographical terms to fairly describe the true origin
of the wine. To do otherwise, one risks losing value in any brand
investment as well as the possibility of having ones sale
of wine enjoined based on geographical issues.
The best use of geographical terms is to identify the origin of
ones wine, not its producer. When the who becomes
the where, confusion ensues and risk to the producer
is greatly increased.
[J. Scott Gerien has represented wineries and vineyards on trademark
matters for more than 10 years. He is head of the intellectual property
department of Dickenson, Peatman & Fogarty, (Napa, CA), a member
of DP&Fs wine industry practice group, and Chairman of
the International Trademark Associations North American Subcommittee
on Geographical Indications. He may be reached at 707/252-7122 or