Barefoot Wine Contests Trademark Of Barefoot Kombucha: Tea Or Wine, Who Can Tell?

from the putting-the-tea-in-trademark dept

We've had a few instances in the past involving wine-makers and needless trademark spats with companies in completely unrelated industries. The time Trek Bicycle went after a winery, comes to mind for instance. More recently, and somewhat more appropriate to this post, was the trademark dispute between a winery and brewery with similar names. The question in that case was whether or not wine and beer were distinct enough products so as to be essentially operating in different industries and, therefore, not fall under the trademark provisions for their respective marks.

This case is even dumber, as Barefoot Wine is contesting the trademark registration of Barefoot Kombucha. Kombucha, you may not be aware, is a tea drink, and Barefoot Kombucha isn't even an alcoholic drink.

A Virginia husband-and-wife kombucha operation is defending its name in trademark court against the world’s largest winery. Ethan and Kate Zuckerman, the couple behind Barefoot Bucha, are currently involved in trademark litigation with E. & J. Gallo, the parent company of Barefoot Wine, which opposed the craft kombucha brand’s trademark application earlier this year, claiming the brand is “confusingly similar in appearance, sound and meaning to the Barefoot Marks.”
So the side discussion of this spat could revolve around the logos of the companies (which are somewhat dissimilar), whether or not the inclusion of the specific kind of drink, wine vs. Kombucha, would negate any customer confusion, or exactly how similar the total packaging of the two company's products is (not very). But we shouldn't really have to do any of that. One of these products is tea and the other is wine. One of them is alcoholic and the other is not. If that isn't enough of a distinction to declare that the two companies operate in different marketplaces, then I don't know what is.
Kate Zuckerman echoed a similar sentiment in a call with BevNET Wednesday, saying “Trademark law was written to protect consumers but in practice a larger company can challenge a smaller business in court and it’s a lengthy, time-consuming, expensive, stressful process.”

Zuckerman also argued against the wine corporation’s aforementioned “confusingly similar” claim that consumers would mistake the products for one another in stores.

“Kombucha is a totally different product from wine,” Zuckerman added. “We’re carried in different retailers, we’re in different bottles We just don’t believe it’s likely consumers drinking kombucha are going to mistake our product for their product.”
I went to get a bottle of wine but ended up with this bottle of tea... said nobody ever in the history of drinking. And, look, I take this seriously as an avid wine-drinker. I'm the exact kind of consumer Barefoot Wine purports to be concerned about. I assure you there's no confusion here.

The post mentions that the two companies have been in contact in order to settle this issue. Hopefully that amounts to Barefoot Wine backing off.

Filed Under: barefoot kombucha, barefoot wine, tea, trademark, wine
Companies: barefoot bucha, e&j gallo


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  • icon
    That One Guy (profile), 23 Nov 2015 @ 10:19pm

    And this is what happens...

    When breweries and whineries pay their lawyers in free drinks, you get people who think that someone's going to go looking for wine, and be so confused that they pick up tea instead.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 24 Nov 2015 @ 12:11am

    Maybe their slogan is (or should be) "Barefoot Wine - the wine that in not entirely unlike tea"

    reply to this | link to this | view in chronology ]

  • icon
    PaulT (profile), 24 Nov 2015 @ 12:32am

    I don't know, these kinds of disputes make some logical sense. Sure, wine isn't the same as tea or beer, but it's hardly impossible for a brand to wish to expand its market by branching into other related areas (i.e. other beverages). Here, if Gallo decided to produce a Barefoot branded non-alcoholic wine, there goes your alcoholic differentiation. Then, they discover their brand appeals to people who like drinking green tea and decide to expand there as well...

    It's still a little silly and seems to still be a case of a large company stopping a smaller company from using the protections they already have. But, it's hardly on the Monster Cable level of things.

    reply to this | link to this | view in chronology ]

    • identicon
      Michael, 24 Nov 2015 @ 5:08am

      Re:

      By your argument, any word trademarked for anything would need to be exclusive across all markets. Nobody can ever use the word Challenger for a product name again because Dodge (well, I guess Fiat) "might" decide to start selling Challenger baseball bats. Heaven forbid anyone wants to use the word "Sky" after the vodka company got a trademark. Don't put the word "Galaxy" in your movie name - Samsung may decide to start filming.

      If you want a trademark - get a product to market in the market you care about FIRST. Then apply for your trademark. If someone beats you to the market, you should be out of luck.

      reply to this | link to this | view in chronology ]

      • icon
        PaulT (profile), 24 Nov 2015 @ 5:24am

        Re: Re:

        "Nobody can ever use the word Challenger for a product name again because Dodge (well, I guess Fiat) "might" decide to start selling Challenger baseball bats."

        Erm, no. You missed half my argument, perhaps deliberately. In fact, specifically called out that kind of bullshit (my mention of Monster Cable, who have tried suing energy drinks).

        This is about two companies that specifically deal in beverages, and I said that while I don't necessarily agree, I can see where there's overlap even if they're not currently in conflict.

        "If you want a trademark - get a product to market in the market you care about FIRST."

        Define "market". If you define the market as "beverages", then Gallo beat the Zuckermans. If you define it as "wine" or "alcoholic beverages" then perhaps not. That's why it's more understandable for there to be a potential conflict here than your idiotic examples.

        reply to this | link to this | view in chronology ]

        • identicon
          Michael, 24 Nov 2015 @ 6:27am

          Re: Re: Re:

          idiotic examples

          Name calling does not help your argument.

          You are basing your argument on "related areas". That's about a ambiguous as you can get. I do some dabbling in wine and will absolutely argue that it is not in the same market as tea. However, I can see how someone that thinks any drinkable liquid is suddenly a "related area". But then why not other liquids? Barefoot hand soap? What if that soap has alcohol in it? Or maybe it is anything that can be consumed, what about food?

          Remember, trademark is (supposed to be) about consumer protection, not about reserving terms for a company that may want to sell something. It has always been limited to directly competitive products. As soon as you start expanding it out, you get into the Challenger car is in the "transportation" market and competing with the Challenger space shuttle and that does not really help consumers from being duped.

          reply to this | link to this | view in chronology ]

          • identicon
            Anonymous Coward, 24 Nov 2015 @ 6:51am

            Re: Re: Re: Re:

            I think I agree with PaulT here. These are both bottled beverages that will sometimes be sold from the same cooler in a store. This isn't a binary thing -- there's a spectrum from clearly unrelated to clearly related. Barefoot Wine and Barefoot Tea are close enough that it would be confusing to a person in a hurry (or whatever the typical test is).

            reply to this | link to this | view in chronology ]

          • icon
            PaulT (profile), 24 Nov 2015 @ 7:24am

            Re: Re: Re: Re:

            "Name calling does not help your argument."

            I called your examples idiotic, as they are, just as the real-life examples I already cited are. I'd be calling any court action that brought them to be legally evaluated idiotic. No need to take it personally, unless you're deliberately distorting what i said to make some different point, in which case I might change my mind.

            "You are basing your argument on "related areas". That's about a ambiguous as you can get."

            Exactly, which is my entire point. This isn't a cable manufacturer suing a soft drink manufacturer because they used a similar name. This is a manufacturer of one kind of drink vs. a manufacturer of another kind of drink. Which, while still possibly overreaching, it at least makes sense that they'd look at this trademark. I'd not be supporting legal action personally, but it makes sense why someone would be thinking that way if they're over-cautious.

            "As soon as you start expanding it out, you get into the Challenger car is in the "transportation" market and competing with the Challenger space shuttle"

            Which I would call as idiotic an example as the Monster ones. Although they apparently don't have the same outlets at the moment, at least the Barefoot brands could conceivably be sold in the same store. No, nobody's going to be confused over a spacecraft vs. a car. But, a product on one aisle with the same brand name as a product on the next? That's surely not so far-fetched is it? Is that really worth the fight you're picking here?

            reply to this | link to this | view in chronology ]

  • icon
    tkmitchell (profile), 24 Nov 2015 @ 5:33am

    purpose of trademark

    I understand that trademark is for the benefit of the consumer. Not being a lawyer though, is it just supposed to protect me from getting a fake product, or also give me some assurance as to the source of the product?

    Could I create a snack and call it Pepsi Chips? As long as I don't use their logo?

    I can see as to how both these products being beverages someone could be confused as to who the manufacturer is.

    Coke and Pepsi may rightly believe that someone could not make a bottled water and call it by their name. Even though they do not sell one with their name on it.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Anonymous Coward, 24 Nov 2015 @ 6:19am

    Extreme Justificarion

    Thing is I don't think that Xerox had problems as a company because they lost their trademark. I think they had other issues. In fact, I think that having Xerox being a generic term for making a photocopy might have been a boon for the company, as in free advertising.

    Therefore I do believe that where the trademark complaint is NOT about some knockoff product using a name, it is all about two things: 1) big companies trying to exert control over small companies (because the can) and 2) lawyer's need for viability either through billable hours or retainer usage (though I suspect there are some direct hire lawyers in big companies who are trying to justify their existence).

    reply to this | link to this | view in chronology ]

  • icon
    Drawoc Suomynona (profile), 24 Nov 2015 @ 7:50am

    Somewhat dissimilar?

    "So the side discussion of this spat could revolve around the logos of the companies (which are somewhat dissimilar)..."

    Somewhat dissimilar? Meaning what? They are essentially the same but somewhat dissimilar? Mostly the same but somewhat dissimilar? Either one sounds like a grudging admission that they do indeed have similarities.

    And the fact that they are similar designs is certainly not a "side discussion", it's front and center.

    Paul T is wholly correct in his comments.

    reply to this | link to this | view in chronology ]

  • identicon
    Dan, 24 Nov 2015 @ 12:08pm

    This is a perfectly reasonable thing to contest. If I saw "Barefoot Kombucha" in my grocery store, I'd probably assume it was made by the same company that made "Barefoot Wine," which is a well-known brand.

    They're both bottled fermented drinks. It doesn't seem crazy at all for a winemaker to branch out into kombuchamaking.

    I'm not saying the winery should definitely win, but it sounds like the exact sort of case trademark enforcement is supposed to be used for.

    I come to Techdirt all the time, but I don't get this article. Do you just hate trademarks in general?

    reply to this | link to this | view in chronology ]

  • identicon
    Dan, 24 Nov 2015 @ 12:08pm

    This is a perfectly reasonable thing to contest. If I saw "Barefoot Kombucha" in my grocery store, I'd probably assume it was made by the same company that made "Barefoot Wine," which is a well-known brand.

    They're both bottled fermented drinks. It doesn't seem crazy at all for a winemaker to branch out into kombuchamaking.

    I'm not saying the winery should definitely win, but it sounds like the exact sort of case trademark enforcement is supposed to be used for.

    I come to Techdirt all the time, but I don't get this article. Do you just hate trademarks in general?

    reply to this | link to this | view in chronology ]

  • icon
    Monday (profile), 24 Nov 2015 @ 6:42pm

    Who was really first???

    When I first read the word Barefoot, I honestly thought of Hang Ten, and surprise surprise, they both have Hang Ten's Logo on their product - both of them... Somebody needs to inform Hang Ten that their trademark is being molested by two corporation.

    Barefoot Wine is at: http://www.barefootwine.com/

    Barefoot Bucha Certified Organic Kombucha is at: http://www.barefootbucha.com/

    AND finally,

    Hang Ten is at: http://www.hangten.com/

    Hang Ten has been around forever, and I think they should get into the melee and tell them both "We need you to fix your logo violations, and pay us for damages!!!"

    Maybe, that would be enough to shut them both the fuck up and show just how asshatish they are both acting...

    reply to this | link to this | view in chronology ]

    • icon
      PaulT (profile), 25 Nov 2015 @ 12:13am

      Re: Who was really first???

      "they both have Hang Ten's Logo on their product - both of them"

      No, they have footprints. Or, one footprint in the case of the wine.

      "Hang Ten has been around forever"

      On a quick Wikipedia search, Hang Ten was formed in 1960, while Barefoot Wine was launched in 1986.

      "I think they should get into the melee"

      Because we haven't already got enough morons fighting these things...

      As silly as this sort of this already is, it will get ridiculous if companies that have been trading simultaneously for nearly 30 years suddenly decided they need protection against each other. (Yes, I know there are examples of just this, we don't need more).

      If there has to be a fight, let's at least keep it to whoever is working in a similar industry, not who happened to think of making their logo a footprint first.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 25 Nov 2015 @ 11:20am

    I tried to let Barefoot know I wouldn't be purchasing anymore of their products due to their childish behavior.

    Unfortunately, their 'contact us' web form doesn't work on Chrome. What a surprise, they're inept in more than one way.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 25 Nov 2015 @ 11:26am

    Kombucha, you may not be aware, is a tea drink, and Barefoot Kombucha isn't even an alcoholic drink.
    Actually, I wasn't aware. I honestly thought "Barefoot Kombucha" was another, admittedly malformed, example of the myriad puns on Benedict Cumberbatch's name.

    reply to this | link to this | view in chronology ]

  • identicon
    Dan Hallahan, 29 Nov 2015 @ 7:22am

    Barefoot Wine or Barefoot Bucha

    Not only are the two products dissimilar with respect to one being alcoholic and the other a non-alcoholic, fermented tea, but their business models are entirely different. Barefoot Bucha is based on environmental sustainability through recycling of their bottles. Consumers can (and do, according to their website) bring their bottles back to be refilled.

    One way to consider if there is confusion between the two brands is to find out how often consumers of Barefoot Wine bring back their bottles to be refilled. The answer is obvious as is the difference between the two products.

    reply to this | link to this | view in chronology ]

  • icon
    jim kauffman (profile), 29 Nov 2015 @ 11:46am

    Barefoot Wine v. Barefoot Bucha

    What Gallo wine company has to gain is a bully's prize, the intimidation of a smaller company that isn't even a competitor. What it has to lose is customers. I, for one, will not knowingly buy any wine produced by Gallo, regardless of its name. Same with another bully: Trump.

    To the Gallos/Barefoots of the world I say, "Get a life!" And leave people who aren't squeezing your grapes alone.

    reply to this | link to this | view in chronology ]


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