“The propriety of using the family name as a trademark to promote a business is often taken as an article of faith. After all, if your family has operated a winery for many years, why wouldn’t you be allowed to use the family name as a trademark to identify your wine? The answer lies in the Lanham Act, the federal statute that governs trademark law,” writes Daniel B. Moar, a partner in Goldberg Segalla’s Business and Commercial Practice Group.
In his article for the New York Law Journal, Dan looks at the criteria used to determine if and when winemakers are able to officially trademark a family name that is also used in business.
The first trademark test facing family-named wineries involves determining if the name is “primarily merely a surname,” which looks at whether a name is used by others as a surname, has the look and sound of a surname, or has other meaning associated with it. Dan goes on to explain how family wineries can petition for trademark based on secondary meaning: “An owner can establish secondary meaning by showing through marketing expenditures, sales volume, and other means that the consuming public associates the mark with a single source.”
Dan concludes the piece with a look at Taylor Wine v. Bully Hill Vineyards and the court’s final injunction stipulating how Walter S. Taylor, an estranged member of the Taylor Wine family, could use his name in relation to his own winery, Bully Hill Vineyards. “The Taylor Wine decision represents the court’s attempt to balance the need to enforce trademark laws while still allowing an individual to acknowledge his own last name. The decision addresses many of the legal complexities involved when using a surname as a trademark.”