Helpful tips when applying for COLAs and TMs.
Dealing with the TTB and USPTO can be very similar to dealing with the DMV, but imagine there are thousands of people waiting in the digital queue ahead of you. As with the DMV, you're a nervous wreck because you're worried that when you finally get to the window, you will discover you completed the forms wrong and will have wasted an entire afternoon.
When it comes to the TTB and USPTO, chances are you WILL complete the forms incorrectly because they can be confusing and there’s not a lot of help out there. At some point, you will feel overwhelmed, frustrated, and are start to rethink your "brilliant idea" of starting your own wine brand. I know how you feel; I have registered multiple brands with the USPTO and applied for hundreds of COLAs with the TTB. Here are some things I have learned...
Tip #1: Hire a professional
For your first time at the rodeo, hire a professional (and learn from them). Chances are, if you’re in the industry long enough, you’ll likely create more than one wine brand and will definitely need to apply for more than one COLA; why not pay an expert to walk you through the process? Pretend you're in school again and take meticulous notes.
Pay them to show you how it's done. I once created a little video for one of my clients where I filmed myself submitting a COLA application online. For the cost of 20-30 min of my time making that video, they now have a helpful resource they can use over and over.
When I hired a lawyer to help me with researching and registering new wine brand names, I made sure to ask a lot of questions about the process (especially on how to determine if a name is available for use - it’s more complicated than you think!). I knew this would end up costing me more up front, but I knew I would want to handle future registrations myself so I felt the cost was worth it.
Tip #2: Do your homework
Before hiring a professional to help you, do take the time to at least familiarize yourself as best you can with the COLA and trademark processes. Spend an afternoon (or two) doing your own online research. Knowing the basics will help you make better use of your time with the professional you hire as you’ll know what questions to ask.
Want additional clarification? Don’t be afraid to call the TTB or USPTO directly. Be friendly, casual, use your sweet voice, and don’t be afraid to ask dumb questions. Hopefully you get someone on the line who wants to help you. I've found most the people at the TTB to be very helpful, but that's definitely not my experience with the USPTO.
Tip #3: The professionals don’t always know everything
Both the TTB and USPTO have gray areas in their rules and regulations so if you ask the professional you’ve hired to guarantee that your wine label will receive a COLA or that your brand will receive registered status, they should respond with “most likely” or “I’m pretty sure” and rarely a definitive "yes". I know this seems odd, but with constantly changing regulations and the fact that many rulings are based on the subjective viewpoint of the government official assigned to your application, it’s almost impossible to guarantee anything.
This is an important fact to remember as well if you are doing everything on your own without the help of a professional. Just accept that you will likely receive rejections and have to spend a lot of time trying to understand the rejections, making edits, and resubmitting your applications. But hey, if your application is approved the first time around then at least you’ll be pleasantly surprised! I just find it’s better to expect the worst.
Tip #4: Rejected? Channel your inner lawyer!
If you’ve received a rejection on your application, this is a great time to fire your professional and take matters into your own hands. I know that sounds counterintuitive but the fact is, no one will be as passionate or work as hard as you will be when it comes to fighting for your brand/label.
Use those skills you learned in high school debate team or from watching too many episodes of Law & Order and don’t be afraid to argue against a negative ruling made by the TTB or USPTO. You don’t need a law degree, just a little confidence and knowing how to use the argument of precedent.
Many times I have gotten both the TTB and USPTO to change their minds and approve an application because I argued a good case. Most my arguments focused on showing evidence that there were other applications/brands/labels/scenarios similar to mine that were approved.
I’ve also used the TTB’s gray area against them. For example, there’s a rule in wine labeling that a certain piece of information needs to be “separate and apart” from other information. A COLA of mine was rejected because I didn’t keep the pieces of information “separate and apart ENOUGH". I called them and argued that there was no guidance on exactly how far apart the information needed to be so one could interpret that rule to mean the pieces of information simply couldn’t be touching each other… and my design followed that interpretation. Happily, I won that argument.
I should point out that I only argue my case once I have a clear understanding of why my application was rejected. So make sure you understand exactly why you received a rejection before you put your boxing gloves on. For instance, the TTB can be a little vague in their notes when trying to convey reasons for rejection. Most of my clients submit their own labels for COLAs or hire a compliance firm, and it’s been the case that my clients or their firm misunderstood the reason for rejection and told me I needed to completely change the label design. However, upon further investigation, I would find that the issue was often minor and typically had to do with an error on the application, not the label.
I hope you find these tips useful. Best of luck!