Imitation may be the sincerest form of flattery, but it can also be highly detrimental to businesses and their brands. That’s why Wine.com, the largest online wine retailer in the U.S. by revenue, traffic, selection, and reach (selling over 9 million bottles per year throughout the United States), protected its product by registering its word mark WINE.COM in the Principal Register of the U.S. Patent and Trademark Office (USPTO). The USPTO has made it clear that it will be very discriminating with respect to allowing .com marks to proceed to registration.
From the ’net to the nation
Wine.com is more than a URL; it’s a brand — and as such, name recognition is as integral to its operations and continued success as its customer service and warehouses.
For 25 years, Wine.com has maintained its name, brand identity, and website domain to connect its customers with unique, quality wines. Prioritizing user experience, innovative offerings, and client satisfaction helped cement the company’s position and reputation as the top online wine retailer.
Novices and connoisseurs alike have provided scores of positive feedback and customer reviews. Wine.com understood that to continue cultivating positive relationships and growing sales, it had to protect its brand identity — and the customer public proved to be integral to the company’s ability to obtain the highest level of brand protection.
Making the case for trademark registration
Businesses must meet rigorous standards to be listed on the USPTO’s Principal Register, which is one of its two trademark registry lists — and the one reserved for distinctive trademarks that meet all the statutory requirements for federal registration (the second list, known as the Supplemental Register, is available for brands to attain federal trademark registration under less stringent conditions). This is particularly true for marks that contain top-level domains such as “.com.” Indeed, Wine.com’s first attempt to secure the USPTO’s approval of its trademark filing on the Principal Register was denied by an Examining Attorney who claimed that the mark was generic and/or merely descriptive of the entity’s services and lacked sufficient marketplace distinction under the Trademark Act.
This setback prompted Wine.com to try again and fortunately, its perseverance paid off.
With the help of Nixon Peabody’s Intellectual Property team, Wine.com carefully prepared its rebuttal to the USPTO’s final Office Action, compiling significant market research and data — along with USPTO precedent — to establish that the mark WINE.COM not only meets, but exceeds, the threshold for “distinctiveness in the marketplace,” as articulated in prior USPTO case law and the Trademark Manual of Examining Procedure. That is the USPTO’s examination guide that delineates all of the laws and regulations that must be adhered to for an entity to apply for and register a federal trademark on the Principal Register in the United States.
Brand recognition bolsters Wine.com’s trademark application
One of the hurdles facing Wine.com was proving that its mark was associated with a distinct brand, rather than being generic for or describing a general service. In its subsequent opportunity to present its basis for registration on the Principal Register, Wine.com and the Nixon Peabody team engaged a respected and experienced trademark survey expert to conduct a survey of consumer perceptions of the brand. These efforts proved overwhelmingly that a majority of relevant consumers identify the WINE.COM mark as a brand. Wine.com also pointed to evidence that the USPTO has, in fact, registered other “generic.com” terms, as well as compound marks composed of the term WINE plus a generic term, supporting the fact that the mark WINE.COM is not generic and therefore is eligible for protection.
In addition to the consumer survey evidence reinforcing its claim that the mark has acquired distinctiveness in the marketplace, Wine.com submitted a substantial volume of materials and data showing that consumers recognize the WINE.COM mark as a brand, including, without limitation:
- Wine.com’s long, exclusive, and continuous use of the mark with the related services for more than 20 years;
- its large-scale sales figures in the billions since 2015;
- its extensive marketing and advertising expenditures and efforts;
- a notable amount of unsolicited media coverage and press identifying the WINE.COM mark as a brand in connection with the company and its services;
- multiple letters submitted by well-known industry leaders attesting to the distinctive nature of the WINE.COM mark; and
- Wine.com’s several foreign registrations for the WINE.COM mark or marks incorporating the term WINE.COM.
What’s next for Wine.com?
In August 2023, the USPTO granted a Certificate of Registration for the WINE.COM word mark, empowering the company to continue its highly successful operation. Wine.com’s customer base continues to grow — the company recently netted over $350 million in annual sales and serves 690,000 customers, both new and repeat, through the Wine.com retail store.
Establishing brand identity helped Wine.com achieve its success, and Nixon Peabody is proud to help the brand protect its distinct identity and continue to exceed customer expectations.
