For wineries, managing intellectual property (IP) is crucial to maintaining brand identity and protecting creative investments. While general IP principles apply across many sectors, wineries face unique challenges and opportunities.
We have spoken to several wine industry leaders and compiled their most frequently asked questions regarding IP protection. This article provides answers regarding core IP types and effective management strategies that wineries should adopt.
What is intellectual property and why is intellectual property protection important for the success of my wine industry business?
Intellectual property refers to valuable non-tangible assets. Even though these assets are non-tangible, they can be protected. There are several types of intellectual property:
• Trademarks identify source through the use of symbols, names, or designs and distinguish the company’s products from those of competitors. For wineries, trademarks may include the name of the vineyard, logo designs, and even unique label features or bottle shapes. Properly registering trademarks is critical to enforce exclusive rights and prevent misuse by others. A trademarked name or logo allows consumers to associate the product with a specific winery’s quality and reputation, building loyalty over time. Trademark protection keeps others from using similar marks that would cause consumer confusion.
• Copyrights cover creative works such as website content, photography, and advertising material. Any unique content produced for the winery—from label artwork to promotional videos—can be protected by copyright. This protection is automatic upon creation, but formal registration strengthens the winery’s legal standing, making it easier to defend against infringement. Copyright protects against creative expression being copied by others without permission.
• Patents protect useful inventions and may apply to novel winemaking processes or technologies. Although less common in winemaking, patents could cover novel fermentation techniques or vineyard management technologies. Patents provide exclusivity, ensuring the winery can control the use of its innovative methods.
• Trade Secrets include confidential information such as proprietary blends, aging processes, and customer data. For trade secrets to retain their protected status, wineries must take reasonable steps to keep this information confidential, such as using non-disclosure agreements (NDAs) and limiting access to sensitive information.
What are some steps I can take to protect my brand and trademarks?
A winery’s brand is often its most valuable asset, making trademark management a priority. A lot of effort goes into making high-quality wines and curating tasting experiences that customers will remember. When a consumer is facing a wall of wine at the wine store or an extensive wine list at a restaurant, you want these consumers to remember your wine and not confuse you with a competitor that may be piggy-backing on the reputation you have taken the time, effort, and expense to build. Here are best practices for wineries to consider:
• Choose Distinctive and Protectable Names: Wineries should select unique, memorable, and legally protectable names. Trademarks fall into categories ranging from “fanciful” (completely made-up words) to “generic.” The less the mark naturally conveys about the product, the more protectable it is. Names like “Yellowtail” for wine are highly protectable because they bear no direct relation to aspects or qualities of the product.
• Consider Trade Dress: Trade dress is a form of trademark protection and covers the distinctive visual appearance of products or packaging, such as wine labels and bottle designs. To be protectable, the trade dress must be unique to the winery and have come to be recognized by consumers through regular use. Distinctive bottle shapes or label layouts can qualify for trade dress protection, provided they are original and have developed a reputation in the market.
• Monitor and Enforce Rights: Trademark protection requires ongoing vigilance. Wineries should regularly check for unauthorized use of their trademarks or similar marks that could confuse consumers. Enforcing rights may involve issuing cease-and-desist letters or, in severe cases, taking legal action.
• Geographical Indications (GI), including AVAs: American Viticultural Areas (AVAs) and other geographical indicators are specific to wine-producing regions. To label a wine as originating from a GI, the grapes must come from that area. Napa Valley, for example, is a protected AVA, and only wines produced within this region can use the name legally. Wine companies must be careful to confirm they are using any geographical indications properly.
Do I need to register my trademarks?
No, but there are advantages. These include:
• Constructive Nationwide Use: If a business does not register a trademark, then it can only enforce the trademark in the geographic areas in which it actively uses the trademark. Registering a trademark grants the owner nationwide rights regardless of whether it uses its trademark nationally, though actual enforcement must wait for use in the geographic area where the infringement is taking place.
• Presumption of Validity of Rights: Because registering a trademark involves an application and vetting process, after a registration is granted, there is a presumption that the owner’s rights to the trademark is valid. Although this presumption can be rebutted in litigation, it makes things more difficult for the opposing party. It can also make cease and desist letters more persuasive because the trademark owner is able to provide concrete proof of its trademark.
• Use of the ® Symbol: Although a business can use the ™ symbol without registering its trademark, the use of the ® symbol is reserved for trademark owners who have registered their trademark. The use of this symbol indicates to potential infringers that you have a trademark registration and can be a potential deterrent.
Does my U.S. registration protect me throughout the world?
No, trademarks must be registered in each country in which you want to protect the mark. But there are some shortcuts. As an example, one registration covers the whole European Union. In certain cases, it is also possible to use a registration in one country as the basis for protection in a different country. The rules are different depending on the circumstances and the country.
What are some steps I can take to protect copyrightable material?
Marketing content for wineries often includes unique visual and written material that benefits from copyright protection. Having clarity about who owns the copyright to different materials and how other can use this material can have substantial benefits for wine industry businesses. For example, it can be the difference between being able to use a label for decades and profit over the built goodwill associated with it or having to pay to have a different label designed for new products because the designer, not the company, owned the rights, and then having to start building goodwill almost from scratch. It can also help wineries capitalize on the social media content of consumers, which is often free and very persuasive to other consumers. Here are several ways to manage these assets effectively:
• Get Copyright Assignments From Contractors: Many wineries hire freelancers to create content, including label designs and websites. Without a copyright assignment, freelancers retain ownership of the work they produce. To avoid complications, wineries should require a written assignment transferring copyright ownership to the winery.
• Register Copyrighted Works: While copyright protection is automatic, formal registration of key assets like photos, website content, and promotional videos provides a clear legal advantage in case of infringement. Registration enables wineries to seek statutory damages and attorney fees if they need to enforce their rights.
• Get Authorization for Use of User-Generated Content: Many wineries encourage social media sharing by customers. However, they should ensure they have permission to use these posts in marketing campaigns by including terms of use that give the winery a license to repurpose customer photos or comments.
What are some steps I can take to protect my trade secrets?
Trade secrets cover any confidential business information that gives a winery a competitive edge. This can include market research, proprietary viticultural and vinification research and practices, profit and loss information, and customers lists, in addition to many other things. To safeguard these valuable assets, wineries should:
• Implement NDAs and Confidentiality Agreements: Employees, contractors, and business partners who access sensitive information should sign confidentiality agreements. These legal tools restrict information sharing and set expectations about handling proprietary knowledge, from recipes to customer lists.
• Limit Access to Sensitive Information: Only essential personnel should access trade secrets. Implementing access controls, such as password-protected systems or secure filing cabinets, can help maintain confidentiality.
• Educate Staff on Trade Secret Policies: Employees must understand the importance of confidentiality and the specific measures implemented to protect trade secrets. This can be accomplished through regular training sessions that reinforce these practices.
The wine industry often revolves around physical assets: acres of vineyards, tons of grapes, wine processing space, cases of wine, storage space. But the intellectual property that informs the physical products and often increase their quality and profit margins is also incredibly valuable. Investing and protecting these intellectual property assets is crucial to long-term success in today’s wine industry.
About the Authors
Nate A. Garhart is special counsel and MaryJo Lopez-Oneal is an associate in Farella Braun + Martel’s San Francisco office.
