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Michter's Fort Nelson Distillery Opening JANUARY 25, 2019 | MODERN DISTILLERY AGE VOLUME 10 | NUMBER 3 Who Owns Montauk Booze? Michter’s Fort Nelson Distillery Special to Modern Distillery Age by by Robert A. Rivas, partner in the Los Angeles office of Ropers Majeski, [email protected] – www.rmkb.com Opening Celebration Alcoholic beverage brand owners, especially in the After years of restoration work, Michter’s Fort Nelson Distillery will have an start-up phase, are inevitably tasked with developing opening celebration on January 31 in Louisville. Public tours are scheduled brand names for their products, including line to begin on February 2 and can be booked at www.michters.com. Directly extensions. This involves developing a trademark that across the street from the Louisville Slugger Museum & Factory, Michter’s Fort is protectable under either the Lanham Act or common Nelson Distillery is the newest member of the Kentucky Bourbon Trail and is law. Due to the nature of the industry and certain down the block from the Official Starting Point of the Kentucky Bourbon Trail, regions being famous or well-known for production which is located in The Frazier History Museum. of wine, beer or spirits, or even being a location that is known for “partying” (i.e., consumption), brand owners many times desire to reference a region in one way or another. This can lead to numerous obstacles for securing a protectable trademark such as in the case of Stone Ale or California Coolers and countless others in the industry, because geographic locations are not protectable, absent certain conditions which are described below. These issues are no better exemplified than in the case of the legal battle at the United States Patent and Trademark Office (USPTO) and courthouses over Montauk liquor brands currently taking place between owners of wine, beer and spirits brands all using said geographic location as a brand name. continued on page 2 The Fort Nelson Building is an impressive example of cast iron and stone construction with Romanesque windows and a striking corner turret rising above its neighbors. First built in 1890, the building was in such disrepair Distilled Spirits Council when purchased by Michter’s in 2012, that it featured a partially collapsed Urges End of Retaliatory staircase and no floors. “It’s only fitting that a once abandoned, great American brand found its Tariffs on U.S. Spirits home in a once abandoned, great American building,” said Michter’s President The Distilled Spirits Council, in coordination with Joseph J. Magliocco. “The Fort Nelson Building is an architectural gem, and a diverse, ad hoc coalition of more than 45 business our team is so fortunate to have had the opportunity to bring it back to life and agricultural groups, has sent a letter to Commerce and make it a special place for everyone to visit.” Secretary Wilbur Ross and U.S. Trade Representative Saving the historic building required extensive work including the Robert Lighthizer requesting that the United States installation of 400,000 pounds of structural steel. work with Mexico and Canada to end retaliatory tariffs Michter’s Fort Nelson Distillery will operate with tours, tastings and a gift on U.S. goods as soon as possible. shop. Whiskey production will be conducted on the pot still and cypress “U.S. spirits have been a target of the trade wars, wood fermenter system from Michter’s Pennsylvania Distillery, which traces with American whiskey the only U.S. agricultural its history back to 1753. product subject to retaliatory tariffs by all of the “These stills will once again produce some incredibly special whiskey,” said retaliating trade partners,” said Distilled Spirits Council Michter’s Master Distiller Pamela Heilmann. Senior Vice President for International Affairs Christine The second floor of the building will feature The Bar at Fort Nelson. LoCascio. Cocktail historian and author David Wondrich consulted on the classic “Open markets created by trade agreements have cocktail list. In addition to cocktails designed by Wondrich, the bar program greatly benefited the U.S. spirits industry, American will incorporate modern creations by Head Bartender Sevan Araneda, former farmers and our consumers. We urge continued General Manager of San Francisco’s Bourbon & Branch, and Bar Manager dialogue with Mexico and Canada to secure the continued on page 2 continued on page 2 be a known location and the booze not the deal to indemnify the buyer from these Michter’s Fort Nelson originate from said location, while the types of claims. Distillery Opening consumers believe it does. While it is cool to be a “Cool Kid” with a continued from page 1 There is currently a bottleneck of liquor brand in a party town, it is not cool Dante Wheat, former Bar Manager at trademark applications and proceedings at to be on the hot seat of a witness stand in the USPTO for Montauk as a trademark for a courtroom. Louisville’s Butchertown Social. return to page 1 The Bar will feature custom glassware from a litany of wine, beer and spirits producers. U.K. producer John Jenkins and an advanced To make matters even more complicated, a ice program with machines from top global trademark does not have to be registered Distilled Spirits equipment purveyors, including Clinebell, with the USPTO. A trademark owner can Council Urges End of Hoshizaki and Scotsman. The bar will serve have what is referred to as common law as a resource for the local Kentuckiana bar trademark rights that are not registered with Retaliatory Tariffs on community and host educational seminars the USPTO and limited to the geographic from industry professionals through its Fort area where the product is sold, sparking U.S. Spirits continued from page 1 Nelson Fellows program. a firestorm of cease and desist letters and prompt removal of the retaliatory tariffs,” In addition to Michter’s Fort Nelson letters of protest between producers, LoCascio concluded. Distillery, the company owns Michter’s including those that have not registered The ad hoc coalition is urging the Shively Distillery in Louisville as well Montauk or have been rejected by the USPTO Administration to take all necessary steps as a 145-acre farm and operations in for prior filings or office action rejections for to resolve this matter so that zero-tariff Springfield, Ky. geographic issues. North American trade can resume, and so return to page 1 The typical strategy to achieve secondary it can turn attention to securing prompt meaning is to spend a lot of resources to Congressional approval of the U.S. – Mexico Who Owns Montauk create the secondary meaning and grow – Canada Agreement (USMCA). the brand accordingly. However, the brand The full text of the letter can be Booze? continued from page 1 has to be used continuously and exclusively. downloaded here. During the days of Prohibition, Montauk, With so many brands utilizing Montauk”since return to page 1 N.Y., was a hub for bootlegging. Montauk at least 2012, the “Cool Kid” legal battle remained a small, sleepy fishing village at for Montauk will probably not end WSWA Women’s the remote end of Long Island, while the anytime soon. rest of the Hamptons evolved into a resort Most of the brands are start-ups looking Leadership Council area and residential area for the rich and for outside capital and investment and/or famous. Almost one decade ago, Montauk are dreaming of a “Casamigos” payday in the Elects 2019-2020 started to become a high-end playground near future. Unfortunately for these brands, Advisory Board and for the trendy and boho-chic, including when lawyers perform due diligence on a models, hedge-funders, investment bankers brand they have a checklist, and one of the Officers and entertainment industry types. The “Cool first boxes to be checked off is for Trademark The Wine & Spirits Wholesalers of America Kids” of Montauk have decided to cash in on Registrations and Serial Numbers for the (WSWA) Women’s Leadership Council (WLC) the developing reputation of Montauk and registrations, and they do not want to see have elected the group’s 2019 Advisory several brands of wine, beer and spirits have a blank exhibit list of intellectual property Board led by Chairman Philana Bouvier of sprung up claiming ownership of the word ownership. They are, after all, investing in Young’s Market Company and Vice Chairman “Montauk” for trademark purposes. or buying a brand (i.e., trademark). If it is Jessica Cyr of Martignetti Companies, both of Today, there are approximately twenty or blank, the investor or buyer will walk away whom will serve two-year terms. The board so alcoholic beverage brands utilizing the or slash the purchase price since there is no also welcomed two new members, Amy brand name “Montauk” as a name in one clear intellectual property, and they may Barriault of Central Distributors in Maine, way or another. And, the field continues to be investing in or buying an expensive and and Shell Cameron of Central Distributors grow every day and most, if not all, of the lengthy lawsuit instead. in Arkansas. brands are not produced in Montauk, which So, before embarking on developing “From two wildly successful sold-out has shunned liquor production due to its a brand, it is imperative that the brand leadership development conferences to a bootlegging history. is protectable and registered with the widely-attended reception that has become Enter the USPTO. Geographic names USPTO. This may cost some resources at the a staple at the WSWA Annual Convention such as “Montauk” cannot be protectable beginning of the venture, but it is far less and Exposition, the WLC has had a real and trademarks absent a showing of secondary expensive than developing a brand that lasting impact on the nation’s wholesaler meaning.
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