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Bogus Trademark Claims


scohar

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Got this in email today:

It has come to our attention that you are using the term "Artisan Distilling Workshop" to advertise a one day course that you held on at least two dates. "Artisan Distilling Workshop" is a trademark, whose registration is pending at the US Patent and Trademark Office, used by Michigan State University and Luleå University of Technology in Sweden to describe a two and a half day workshop for the training in small scale, artisan distilling. Since your course is not affiliated with either institution above, you are being notified that you have infringed on the trademark. Please consider this email a cease and desist request and remove this term from your website and do not use it in further advertisement. We hope that this notification will be sufficient and no further action will be necessary. Sincerely, Kris Arvid Berglund, Ph.D.

University Distinguished Professor of Forestry and Chem. Engg.

Michigan State University

East Lansing, MI 48824 USA

Ph.: +1 517 974 3030 (GSM)

Fax: +1 517 432 1143

email: berglund@msu.edu

www.for.msu.edu

www.artisandistilling.org

Kris Arvid Berglund, Ph.D.

Prof. of Biochem. & Chem. Proc. Engg.

Division of Chemical Engineering

Luleå University of Technology

SE-971 87 Luleå, Sweden

Ph.: +46 920 49 30 70

Fax: +46 920 49 11 99

Mobile: +46 70 538 72 62 (Sweden)

Now, I will note that it seems unlikely that this PENDING trademark claim will successfully trademark generic terms like "artisan", "distilling", and "workshop"; however, stranger trademarks have happened.

I hate to see patent/trademark trolls like this, though. It really chaps me.

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Hmm. Sometimes descriptive terms can be protected as trademarks, if there is proof that the marketplace has come to recognize the term as designating just one source of the products or services. Five or more years use is sometimes enough for the US Patent and Trademark Office, but more is usually needed to enforce descriptive marks in court.

Got this in email today:

Now, I will note that it seems unlikely that this PENDING trademark claim will successfully trademark generic terms like "artisan", "distilling", and "workshop"; however, stranger trademarks have happened.

I hate to see patent/trademark trolls like this, though. It really chaps me.

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With all due respect to professor Berglund, I believe that "Artisan Distilling Workshop" is to general a descriptive phrase to trademark. It would be like trademarking "Auto Repair Workshop". If this Trademark comes up for review by the PTO, it should be opposed.

If it were UNIVERSITY OF MICHIGAN ARTISAN DISTILLING WORKSHOP that would be another matter, specific to the University and totally acceptable. But the phrase is altogether too generic as it stands.

Ralph Erenzo

Tuthilltown

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It would appear that Dr. Berglund has consumed too much of his own spirits, because he is delusional. Wasn't there someone a couple years ago who was trying to claim exclusive rights to use the term "craft distillery"?

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Those who can - do. Those who can not - teach, and try to use laws and government to stop competition and crush the free market system. Shame shame shame. What is next trade mark "Algebra II course." The sad part is the government doesn't reject this nonsense up front.

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On second thought however Scott, it might be a good thing. Maybe you should change the name of your course to "Catoctin Creek Distilling Workshop" almost as Ralph suggests. That way when anyone that has attended your class, they'll say that "Catoctin Creek Distilling Workshop" they attended was very informative, and they learned so much. Not only are you promoting your own course, but also your own products.

Just a thought.

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P.S. Please post when you are next offering the course and how to sign up. Will go to yours and not theirs.

Thanks, guys! I appreciate the support. Really.

Our "Catoctin Creek Distilling Course" is in July: July Course

Let them try to argue about that name! I own the trademark on that baby!

Cheers,

Scott

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Got this in email today:

Now, I will note that it seems unlikely that this PENDING trademark claim will successfully trademark generic terms like "artisan", "distilling", and "workshop"; however, stranger trademarks have happened.

I hate to see patent/trademark trolls like this, though. It really chaps me.

Go to their website. Copy their text. They use the term "artisan distilling workshop" to describe their workshop without the trademark character.

I think this pretty conclusive evidence that it is not their trademark. If it is truely a trademark then it should always be marked trademark when it is used by the trademark holder. You can have a trademark without registering it. So pending trademark is really pending registered trademark.

Kenton

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I have never met the good Dr. Berglund, but always keep in mind their may be a chance an "underling", likely a marketing major, may have taken the liberty to sign his name. This often occurs. Especially with email. Just a thought.

Bob

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Hello from Chicago!

My wife, Dr. Hagmann and I host the KOTHE Distilling Technologies Workshops in Chicago at KOVAL Distillery and are happy to see that more education on microdistilling is taking place. Scott and Becky at Catoctin Creek are a great addition to this industry. It is sad to see how some established people are trying to shut out competition (if you want to see another distillery as competition). Microdistilling is still young in its current form. We are all in this together and know that protecting your brand is important. Let's not forget though that the market is big enough for all of us and the terms artisan, craft and boutique distilling should not be exclusive to one company / person. These are the terms we use to describe our industry.

All the best,

Robert Birnecker

Kothe Distilling Technologies.

Award winning handcrafted German engineered potstills for the production of high quality fruit and grain spirits, as well as bioethanol. “Kothe Destillationstechnik” uses patented technology to specially engineer each still with solid quality and energy saving compounds to meet the particular needs of each distiller. Kothe Distilling Technologies is the sole representative of “Kothe Destillationstechnik” in North America, Canada, and Mexico.

--------------------------------------------------------

Kothe Distilling Technologies Inc.

5121 N. Ravenswood Ave

Chicago, IL 60640

http://www.kothe-distilling.com

info@kothe-distilling.com

(773) 295 4454

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I agree with Robert. I think it is very important that we all support each others claim to being legitimately "craft" and "artisan." The market is much larger than any of us (or even all combined) and we will all benefit much more by supporting one another as distillers than drawing lines in the sand over trivial and possibly even petty issues.

Chip Tate

Balcones Distilling

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I agree: this is entirely descriptive, it will never fly with the USPTO.

Also note that the application was filed on April 30, 2010, but claiming first use back to 1998.

I also agree that Kris Berglund deserves some slack here. He's done tremendous things for our nascent industry. While the trademark application is in his name personally, the motivation could very well have originated from some other source - a marketing major.

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The USPTO has been known to grant trademarks to the undeserving and contest trademark applications from those who should be a shoe-in. I guess it depends on who is reviewing the application.

First, I believe this Cease & Desist is worthless unless sent to you by Certified Mail. Email doesn't cut it.

But the guy has to defend his "trademark" or he will have no recourse in the future if anyone else violates it. Use it (and defend it), or lose it.

If you do want to use "Artisan Distilling Workshop" and you get a REAL Cease & Desist letter, you might be able to do this (check with a lawyer): file a suit for Declaratory Judgement in Virginia Federal Court.

If there is even a remote threat of a lawsuit from this guy (i.e. a Cease & Desist letter), then you might want to spend some money with a lawyer to preempt any action on his part by getting a judge -- in Virginia -- to declare whether there is any case against you at all... and bring-up the bogus, purely descriptive nature of this pending "Trademark".

How, and why, could you file in Virginia? How: because he does business in Virginia as much as he does business in Michigan (I'm sure there have been people from Virginia attending his workshops). Why: because if you file in Virginia, he would have to retain counsel *in Virginia* to defend his threatened action... and then you'll see exactly how serious he is about this because it would be costly on his part. Most likely he'll drop it, you'll get a judge to say "this is an empty threat" and you (and anyone else) could go about using the term "Artisan Distilling Workshop" freely.

Otherwise, he may very well get this trademark registered and then even use of "Catoctin Creek Artisan Distilling Workshop" might be cause for legal action.

Just a thought...

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It is clear from the thread so far, Prof. Berglund's filing is not well received.

We have taken the step of filing a protest and opposition with the USPTO over their website, declaring the phrase he has chosen is too broad and overreaching and would be like trademarking "Fine Car Mechanic Workshop" or some such.

The "cease and desist" coming as an email or posting on this website does not constitute a legal action. Until there is a legitimate trademark and an action is declared and filed the notice is meaningless. I'm certain we can identify half dozen other folks who have used the declared phrase so it has not been in exclusive use.

Prof. Berglund should withdraw his filing and reapply with a more specific phrase like "Kris Berglund's Artisan Distilling Workshop", to Delaware Phoenix' suggestion, thereby lending his own credential to the phrase and making it clear.

R

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Certainly Ralph has the right idea.

Everybody who is concerned about this should file a complaint with the USPTO. Since someone above stated the claim was filed on April 30, 2010, the trademark claim should still be under review. If enough protests are received the government will be more likely to reject the claim. If no one complains, trademark will most likely be granted.

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Certainly Ralph has the right idea.

Everybody who is concerned about this should file a complaint with the USPTO. Since someone above stated the claim was filed on April 30, 2010, the trademark claim should still be under review. If enough protests are received the government will be more likely to reject the claim. If no one complains, trademark will most likely be granted.

Good idea. ADI should file one too.

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We have taken the step of filing a protest and opposition with the USPTO over their website, declaring the phrase he has chosen is too broad and overreaching and would be like trademarking "Fine Car Mechanic Workshop" or some such.

Ralph,

Would you be willing to share the text of your opposition and the address you sent it to? I will happily send in one as well, and we might get more ADI folks to do it if we give them a template to make it easy.

Thanks,

Scott

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For those who object to the application for a Trademark on the phrase "ARTISAN DISTILLING WORKSHOP", here is your method of protest direct from the USPTO:

OPPOSING AN APPLICATION:

Before the USPTO registers a trademark, the USPTO publishes the trademark in the Official Gazette. The Official Gazette is a weekly publication that identifies the trademarks that the USPTO has approved for registration. Any party who believes he or she will be damaged by the registration of the trademark can file an opposition to the registration.

If you wish to file an opposition, you should monitor the status of the application by checking the Trademark Application and Registration Retrieval (TARR) database to determine the date the trademark will be published in the Official Gazette, at http://tarr.uspto.gov/ . Once the USPTO publishes the trademark in the Official Gazette, you have 30 days to either (1) file an opposition to the trademark with the Trademark Trial and Appeal Board (TTAB); or (2) request an extension of time to file an opposition.

FEES:

You must pay a fee of $300 for each class of goods or services that you oppose when filing a notice of opposition. An opposition submitted without the required fee will not be accepted.

HOW TO FILE AN OPPOSITION:

The TTAB requests that all TTAB submissions be made online using the TTAB electronic system ESTTA at http://estta.uspto.gov/ .

ADDITIONAL INFORMATION:

If you need more information on filing a notice of opposition, you can contact the TTAB Assistance Center at 571-272-8500 or toll-free at 1-800-786-9199, and you can refer to the online information at http://www.uspto.gov/web/offices/dcom/ttab/ .

LETTER OF PROTEST:

A letter of protest is a way for someone to bring to the attention of the USPTO evidence about why an application should be refused registration. The letter of protest procedure applies to pending applications, not registrations. You can file a letter of protest if you are claiming that a pending application is likely to cause confusion with your registered trademark or a trademark in your prior pending application (one that was filed before the application that you wish to challenge) or if there is some other reason you believe the trademark should not be registered. You cannot file a letter of protest solely based on the fact that you believe you were the first to use a trademark.

Letters of protest should be filed before the application about which you are concerned is approved for publication.

FORMS:

You can fax your letters of protest to 571-273-0032 or you can file your letter of protest online through the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/e-TEAS/index.html . You should click on the overall Petitions Forms category from the TEAS front page and then select form number 8 ( Letter of Protest ). Enter the serial number of the application you wish to protest and click on the heading Petitions or similar matters. From the displayed pull-down menu, select the Letter of Protest option and then click the Next button.

You should monitor the Trademark Application and Registration Retrieval (TARR) database to determine the status of the application at http://tarr.uspto.gov/ .

ADDITIONAL INFORMATION:

More information about letters of protest is available in Section 1715 of the Trademark Manual of Examining Procedure (TMEP) at http://tess2.uspto.gov/tmdb/tmep/1700.htm#_T1715 .

If you have any further questions or if you require additional information, please contact the Trademark Assistance Center at 571-272-9250 and press "0". You can reference the following Service Request number: 1-168781896.

*****end of uspto info****

Here is the link to the actual file of the application, you will need to provide the "serial number" listed on this page to file your letter of protest:

http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:ffcais.2.1

I suggest all those Artisan/Craft/Micro Distillers who oppose the application that is the topic of this discussion file your protest per the above instructions. We're not going to spend $300 to file a formal complaint, but will file a letter of protest on the USPTO website as the instructions spell out, no cost there.

You'll have the opportunity to comment why you protest the award of the USPTO protection. Simply, the phrase is overbroad and a typically used industry phrase which if awarded USPTO protection would unfairly limit the rest of the micro distilling industry from making use of a commonly used, generic phrase.

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My letter of protest has been filed.

A sample petition, as entered this morning:

Name

Affiliation

Street Address

City, State, ZIP Code

Dear Sir/Madam;

This petitioner objects to the phrase Artisan Distilling Workshop being granted trademark protection.

On the grounds that the phrase Artisan Distilling Workshop is such a generic term, and that if protected use is awarded to the applicant, it would preclude others, already engaged in offering similar educational programs, from using the phrase in printed material or even in the course of spoken promotional activities.

I personally know of a shortcourse called the Artisan Craft Distilling Workshop, offered by Big Bend Community College in Moses Lake, Washington. I believe that because the coursework has become identified by this title, removing the college's right to use the phrase would only serve to create antagonism and demonstrate ill-will amongst industry colleagues whose interests would otherwise be to offer educational opportunities ahead of financial gain.

Protecting one's commercial interests is a fundamental right that is shared by all, but this petitioner respectfully takes exception to the generic phrase Artisan Distilling Workshop being for the sole use of one individual.

Thank you for your kind attention,

//s//

Name

e-mail Address

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