Has anyone had Diageo try to bully them on a trademark?

[Ursa Major]

So I just checked on my brand trademark that I filed many months ago that was supposed to be done with the gazette posting phase on April 19th. The day before or so, Diageo filed an "extention of time to oppose" letter with the USPTO.

It basically means that they are going to oppose my mark and just need time for their lawyers to figure out how to best screw me. Apparently Diageo owns a company in the Netherlands called "Ursus Vodka Holdings." My company is called "Ursa Major Distilling." Their mark is entirely different than mine except for the "urs" in their name.

Now obviously this is a job for a trademark lawyer, but I was just curious if anyone else has run into this before and what the chances would be of actually keeping my name in the end. I've only been in production for a couple of months and things are finally starting to take off, it would certainly suck to start having to rebrand now.

Any thoughts?

[TetonDistillery]

Ursa is a Latin word, meaning bear

It is relatively common and there are plenty of other entities using the word Ursa. So I doubt anyone can copyright that particular word.

Our vodka is called "Grand Teton Vodka".

The owner of a private label factory made vodka called "Teton Glacier Vodka" contacted us very upset and threatened to sue us for using the word Teton. Then we pointed out that there are about 50 businesses in the region that also use "Grand Teton" in their name. Grand Teton Brewery, Grand Teton Plumbing, Grand Teton etc etc. You cannot trademark exclusive use of a geographical feature or common word.

The other problem with his claim is that mostly his vodka is known as "Glacier Vodka". In fact, that was his website address. www.glaciervodka.com

Nobody actually called his vodka "Teton" Glacier Vodka. All of the marketing and website stuff omits the work Teton. So he really was stretching to make that sort of claim.

You can see on the image of his website that "Teton" is really small. The word that they focus on is Glacier Vodka as their brand.

Ursa would seem to me to be too common for one company to trademark every use of the word and prevent others from using it.

Just my opinion.

[TetonDistillery]

Even better, Ursa Major is a well known constellation.

Our lawyer specifically said that "Grand Teton", because it is a famous geographic feature known by everyone, that it cannot be trademarked by anyone for exclusive use.

As a result, anyone can use it.

Someone cannot use the EXACT same name. We would only be protected from someone trying to use Grand Teton Distillery or Grand Teton Vodka. We clearly got those first.

But we have no right to object to anyone else using another form of Grand Teton, etc.

Ursa Major is just too common and well known for Diageo to claim exclusive use of the word Ursa.

[Ursa Major]

Thanks for the input Teton! Makes me feel a little better.

I should clarify a little as well, our trademark is for our logo, the one you see on the left of the screen. I looked up Ursus' logo and it is three cartoon bears sitting on an iceberg.

All the initial research came back clean, and everything was going smooth with the USPTO until now.

I guess they haven't officially opposed anything yet, just looks like they intend to. But their lawyers are alot better than mine, so I'm a bit uneasy about it.

Thanks again!

[Rickdiculous]

Please consult a trademark attorney on the subject. Words can be trademarked and don't think Bear or any version of Bear Latin or otherwise is exempt from that possibility. Grand Teton is correct that it can't be trademarked for everything, but things can be trademarked in a particular category. ie, the spirits category. So you may be up against a legitimate claim. That said I would not just lay down and play dead for the Big boys. Get an attorney to review your filing and make recommendations for you, if you intend to keep the name it will be worth it. Sometimes a simple letter from a reputable attorney will be enough to let them know you are serious and will cost them money to fight you as well.

I would give this advice to anyone starting in this business as it was given to me. Go to an attorney who does this. I got my lawyer from a very big player in the Craft Distilling industry, who's lawyer is in my backyard. I am paying around $1500 for them to do the appropriate searches and to do the Federal Filing. What is your name worth? I also got the recommendation to have a few possibilities so if one gets excluded you are ready. In my case, the name I want is currently held by a winery in California who is currently not using it. So my attorney is working on finding out if their lack of use is grounds to get them to release or cancel the mark and let me have it. I might have to buy it. I have 5 names I would be happy with and my attorney's search revealed two of my others are free and clear. This gives me the option of letting go of the primary one, even though we have invested a good amount of time developing ideas and imagery. Luckily my wife and I are artists as well so we aren't paying for that service.

You need to know that the United States has a use requirement for trade marks. This is there to prevent squatters on names. You can file an intent to use to get your mark. However, in talking with my attorney you can only hold that for 5-6 years without producing something, with repeated filings. You also need to now that just because you get a trademark does not necessarily guarantee you will get to keep it. Because this is a "USE" based system someone who does not have a filing can fight yours if say they were producing spirits under the same name years before you.

Get an Attorney

[Rickdiculous]

Sorry if that missed the point, as I was typing while you added your last comment. I hope it is still good advice for anyone else reading this.

[Ursa Major]

Thanks Rickdiculous! Some great points. And I'll definitely be consulting an attorney.

Good point on having my lawyer send them something, that sounds like a solid start.

[Hewnspirits]

Hey Ursa....greetings from a former fellow Fairbanksian! I went to UAF back in the early nineties and cut my teeth learning to homebrew up there.

I saw your posting and figured I'd give you my two cents as I've been through some trademark dealings with my new craft distillery and other businesses as well. I agree with both Rick and Teton. If your trademark is primarily the logo then you'll/your hired gun attorney will have an easier time defending it. If it's just about the name and Diageo can show first use in commerce or in their filing date/priority for TM protection, they might have a leg up on you. At the end of the 22 hour long Fairbanks Summer Solstice day, it kinda boils down to a subjective call by the reviewer at the USPTO. Leaning more towards to using an image as your mark may prove stronger than just a word. On the upside, me thinks it's a good sign that the likes of Diageo are worried about us little people. Feeling a wee bit threatened are they?

[bluestar]

If they pursue, and you don't get registration as a result, you can get a hearing. That will cost them, and they may not show, and you are likely to be fine. But you could have your lawyer, given you actually have a strong position, offer a mutual agreement to respect each other's trademarks. By doing so, your getting your trademark indirectly strengthens theirs, and the agreement shows they did due diligence in protecting theirs.

[Ursa Major]

Thanks Hewn!

If you ever make it back up to Fairbanks you'll have to look me up. I started at UAF in '95 and was an avid brewer as well. I'm pretty sure that I am the reason that home brewing as banned in the dorms in '96!

Anyway, thanks again for the input. I've got my attorney looking into it now. It sure would be fun to beat them on this one!

Thank you as well Blue Star. That's some good input. I'm hoping my lawyer can find a way to nip this in the bud before they actually submit their letter of opposition.

To everyone else, thanks again for your thoughts and input. I'll let you know how it pans out. Hopefully there's some lessons to be learned here that can be of value to others. I seem to always learn them the hard way.

[whiskeytango]

Hey Ursa any update on this?

[Ursa Major]

Yes, I've been meaning to post how things turned out, might as well do it now.

Anyway, short story is that they only ended up filing the "intent to oppose" stuff, and never filed an actual opposition. It set my mark back several months, but it is now in the final stages of approval. The last email they sent me said that it has been accepted and is ready for registration, and will be registered in "due time." Whatever that means.

Long story is that my lawyer told me to wait it out. And that's all you can do until they actually file an opposition. If they would have filed an opposition, then my lawyer would have a chance to file some sort of rebuttle. He said I had a pretty strong case and if they wanted to persue it further it would cost them a whole bunch of money.

But beware, they do this kind of thing several times a week to many marks. So do your research. I got incredibly lucky. From my own research, the unlucky ones don't get to register their marks, AND end up getting sued by Diageo. On the trademark search page, find pretty much any Diageo brand that has a dude named Evan Gourvitz' name on it (he's one of their attorneys). Click on his name and see everything he's filed against. This will give you a good idea of how things went down with other folks, and hopefully give you an idea of how to avoid such things.

Thanks again for everyone's input on this, it was great peice of mind.

[Hewnspirits]

Glad to hear that it worked itself out for ya Ursa. Now you can enjoy that awesome Fairbanks Winter!!

[whiskeytango]

Thanks for the update Ursa. We have been Issues a "Suspension Letter" so in your professional distilling experience does that mean we are hosed? or is it just part of the process.

[HedgeBird]

Hey Ursa....greetings from a former fellow Fairbanksian! I went to UAF back in the early nineties and cut my teeth learning to homebrew up there.

Hewn, you really are like my doppelganger; I also spent a short while living in fairbanks a good few years back! ..and glad to hear things are working out with your trade mark Ursa!

[Ursa Major]

Whiskeytango,

I'm definitely no expert, but "suspension letter" doesn't exactly sound ideal. I didn't have to deal with suspension so I may be way off base, but the only place I've seen the word "suspended" was when there was a civil case going on that they were awaiting the verdict of. Here's an example I pulled off the site:

http://ttabvue.uspto.gov/ttabvue/v?pno=91211056&pty=OPP click on the document that says "suspended."

I'm not sure where you're at in the process, so this may or may not apply.

Good luck to you either way!