Barefoot Brouhaha

 

While it may have looked like a clandestine transaction when Kate and Ethan Zuckerman pulled up behind Mas and began selling their product out of the back of a Honda Civic, the off-the-grid sales weren’t illegal. They were delivering the fermented tea known as kombucha, desired by adherents who crave its probiotic properties.

Since the couple started selling Barefoot Bucha in 2010, the health-conscious entrepreneurs living the small-footprint life in the wilds of Afton have continued to make their beverage in flavors like Bluegrass Bucha, Elderflower Sunrise and the most popular, Ginger, which are now distributed in 44 locations, including Washington, D.C., and Maryland.

And when they say “big taste, small footprint,” they mean it. For them, BYOB means bring your own bottle that they’ve sold you to buy their kombucha, and bring it back for refills again and again.
Then they did what any growing business might do and attempted to trademark the name Barefoot Bucha.

 

Trademark experts say even though a company may have a great case, the cost for making that case in the first round in the United States Patent and Trademark Office could cost as much as $200,000—and Gallo is likely to appeal. And Barefoot Bucha is not the first mom-and-pop business to have a corporate giant come after it for its name with dubious claims of consumer confusion, a term known as “trademark bullying.”

It's Happened Here Before

Barefoot Bucha is not the first local mom-and-pop business to have a corporate giant come after its name with dubious claims of consumer confusion, a term known as “trademark bullying.”

Tavola Restaurant

Tavola restaurant got a menacing letter from a lawyer for legendary film director Francis Ford Coppola, who had trademarked the term “a tavola,” which means “to the table” in Italian. To Tavola owner Michael Keaveny (C-VILLE arts and living editor Tami Keaveny co-owns Tavola) the move came across as “bullying.” Coppola doesn’t own a restaurant called Tavola and was basically trademarking family-style dining, was how Keaveny saw it.

Fortunately, the Charlottesville Tavola, which opened in 2009, was here first, before Coppola trademarked the generic Italian term. The filmmaker’s legal team backed off after warning the Keavenys not to try to trademark the name or offer any other goods and services under the Tavola name.

Lockn' Festival

Lockn’ Music Festival originally chose Interlocken Music Festival before it debuted in 2013, perhaps forgetting that there was already an Interlochen Center for the Arts in Michigan. Weeks before the event began, organizers announced that it would henceforth be known as Lockn’ because it was such a unique festival, it deserved a unique name.
Photo by: Tom McGovern

Meet Kate & Ethan

– Founders of Barefoot Bucha

There’s a tangy odor in the air in the production facility next door to the house that Ethan built.

Kate and Ethan, both 36, attended Western Albemarle High and both headed—separately—to California for college: Kate to Pitzer College in southern California for Latin American studies, Ethan to Humboldt State in northern California, where he studied applied sustainability and became a professional snowboarder.
When they moved back to the Charlottesville area—again, separately—in 2007 and 2008, they discovered they shared a hobby, says Ethan. “We were both into fermented food,” like kombucha, kimchi, kefir and sauerkraut.

Kate-Ethan-two

Katie and Ethan make their Kombucha in a brewery next door to the house that Ethan built by hand in Afton, Virginia


More than that, they both were part of a cultural movement that favors a healthy lifestyle and diet, foods that are organic and unprocessed, “raw and alive,” says Ethan. For example, those who want raw unpasteurized milk, which the USDA frowns upon, have to buy shares in a cow, he explains.

“I would get my raw milk in an alley,” recalls Kate of the underground nature of the movement.

Kombucha, loaded with healthy bacteria, is like the miracle drug of probiotic foods, which its adherents believe improves the digestive system at a minimum, on up to detoxing the body, strengthening the immune system and curing cancer. While scientists say there is no evidence to support those claims, bucha believers say it’s been around for 2,000 years and two millennia can’t be wrong.

“People were happy to meet us behind Mas,” says Ethan. “People are pulling back to a time when foods were alive and raw.”

Kate was a member of the Guerrilla Yoga Project and taught yoga for donations. She learned, “You save money by making your own food.” So she’d make her own yogurt.

And Ethan brought something with him from northern California: a kombucha starter called SCOBY—symbiotic culture of bacteria and yeast—that they’re still using today.

 

Photo by: Tom McGovern

 

Making Kombucha

During a tour of Barefoot Bucha, one thing visitors don’t see is the starter, which has been described as looking like a mushroom or, by a C-VILLE staffer, as a “brain.” The light-colored, effervescent contents in bottles of Barefoot Bucha in no way resemble a brain. And while some kombuchas taste decidedly funky, Barefoot Bucha is quite refreshing, slightly sweet, slightly tangy.

Kombucha ingredients are frighteningly simple: tea, sugar and SCOBY.

“We brew the tea, sweeten it and bring in the bacteria and yeast, which feed off the caffeine and sugar,” says Kate.

The tea goes into three tanks in the fermentation room and is covered with a cloth for aerobic, or air fermentation, says Ethan. “The bacteria really love the air,” he says. “We’re not going for alcohol.”

After a week, the tea shifts to stage two in a closed tank with no air, the anaerobic part of the process. Flavors like ginger or black raspberry are added, and, a week later, it’s checked. “Does it have the balance of sweetness and tang we’re looking for,” says Kate.

If so, their certified organic, probiotic drink is ready for market.

Making Kombucha: From Yeast to Keg

  • Photo by: Tom McGovern

  • Photo by: Tom McGovern

  • Photo by: Tom McGovern

  • Photo by: Tom McGovern

  • Photo by: Tom McGovern

  • Photo by: Tom McGovern

  • Photo by: Tom McGovern

  • Photo by: Tom McGovern

  • Photo by: Tom McGovern

Putting their sustainability sensibility where their mouths are, the Zuckermans asked customers to buy bottles for the kombucha, fill and wash them and bring them back to distribution fountains for refills. The risky business model seems to have worked and Barefoot Bucha claims it’s saved 350,000 bottles by keeping the same 20,000 bottles in circulation.

They also use refurbished Coca-Cola kegs in the distribution fountains, and, needless to say, they compost the tea and brewery waste and use it in their garden.
And to would-be distributors who plead that already bottled kombucha is the only way they can sell it, the Zuckermans respond on their website, “Yes, we could sell our kombucha in more locations if we bottled it—but the additional waste isn’t worth it to us.”

 

 

An entirely different family business model

The company founded by brothers Ernest and Julio Gallo immediately after Prohibition that grew to become the world’s largest privately owned winery with annual revenues of $4.1 billion, according to Forbes, has a tragic and at times violent history.

The brothers’ father, Joseph Gallo Sr., grew grapes during Prohibition, and killed his wife, Susie, in a murder-suicide shortly before Prohibition ended, according to author Ellen Hawkes in Blood and Wine: The Unauthorized Story of the Gallo Wine Empire.

 

Ernest and Julio Gallo, ca. 1975. Brothers who founded the E.&J. Gallo Winery in 1933, when Prohibition ended. (CSU_2015_9_724) (Newscom TagID: evhistorypix030489.jpg) [Photo via Newscom]

Photo by: Everett Collection/Newscom


 

The company, which used to make Ripple and Thunderbird and had a reputation for rotgut, owns dozens of wine brands, which range from the lower end Boone’s Farm and André to the more respectable William Hill Estate and Edna Valley Vineyards.

Gallo became known nationally in the 1970s with its battle against Cesar Chavez and the United Farm Workers and was the target of a five-year boycott.

It acquired Barefoot Wine in 2005. The Modesto winery had been around since 1965, and took off in the 1980s with a barefoot logo that stressed a casual wine to take the beach. Barefoot continues to market itself as  “making great wine that tastes better in a tee than in a tuxedo.”

 

More recently, an Asheville, North Carolina, company called GalloLea Pizza Kits, owned by Tom Gallo, changed its name after Gallo claimed it infringed on its trademark. Gallo also saw Gallostix, a sports equipment company, Gallo Pasta and Gallo Cattle Company as names that might confuse consumers or dilute its brand

Companies using the name Barefoot can also expect to have Gallo oppose trademark registration, whether it’s 3T Barefoot for footwear or Raw Pressed LLC’s Barefoot juice or Barefoot Brand clothing, according to the U.S. Patent and Trademark Office database.

A Brief Lesson in Trademarking

Congress passed the Lanham Act in 1946 with a dual purpose: consumer protection from confusion and deception, and to provide a framework for allowing brand owners to protect their reputation and investment in distinctive brands that allow consumers to differentiate between products coming from different sources, according to Minneapolis intellectual property attorney Steve Baird.

 

 

In a 2011 report to Congress, the U.S. Patent and Trademark Office defined trademark bullying as a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.”

The Lanham Act also requires that a mark holder vigorously protect its trademark. Says Baird, “Oftentime trademark bullying is a label that’s misapplied in understanding the nuance of trademark law.”

He says trademarks are not like real estate where you can record legal boundaries. “In the trademark world, there’s no such clarity.”

A lot of times, opposing the registration of a trademark is legitimate trademark enforcement, says Baird. And in the Barefoot Wine/Barefoot Bucha case, he says, “This one doesn’t jump out at me as over the top.”

Baird points out that there’s a difference between the right to use a mark and the right to register it. “Just because the trademark owner opposes registration doesn’t mean they’re going to run to court,” he says. “If Conscious Culture had never filed, would they be on Gallo’s radar?”

Baird also offers advice for small business owners who don’t have the wherewithal to go through the trademark registration process and appeal. “They may be better off pulling the plug early and let a lawsuit in federal court with a jury decide whether there will be confusion,” he says. “It’s harder [for the trademark holder] to prevail there than in the trademark office.”

If a company like Barefoot Bucha loses in the trademark office and doesn’t appeal, and if Gallo decided to sue, in court the judge could forego talking about consumer confusion and determine that has already been established by the trademark office, and go straight to, “Let’s talk about damages,” says Baird.

By waiting to be sued, says Baird, a small company might have insurance that would help cover legal expenses that “are not going to cover trademark registration expenses.”

It comes down to will consumers confuse wine and kombucha, how close are the marks, how close are the goods and would the same kind of customer buy both products, explains Baird.

Photo by: Tom McGovern

 

Fighting back

The classic David and Goliath trademark confrontation came in 2009, when Monster Energy sent a cease-and-desist letter to Vermont microbrewer Matt Nardeau, accusing him of using its brand for his Vermonster beer. A social media campaign was launched and some stores began boycotting Monster. A truce ensued with Nardeau promising to stay out of high-energy drinks.

“A great tool ‘David’ has is the power of social media, the power to shame the brand owner who crosses the line,” says Baird.

 

“I think it’s kind of ridiculous,” says Raphael Strumlauf, owner of Market Street Market, which carries a fountain that dispenses Barefoot Bucha. “It’s such a regional product and a different product from wine.” The Barefoot Bucha is non-alcoholic, he points out, and his shop doesn’t sell Barefoot Wine.

Barefoot Bucha is sold at Whole Foods, which also does not carry Barefoot Wine, although in its opposition to the trademark registration, Gallo says the kombucha is a “beverage product that is sold in some of the same channels of trade as products sold under the Barefoot® marks. Accordingly, it is likely that consumers will mistakenly believe that the opposed mark” is associated with Gallo or Barefoot wine.

Hardly, say Barefoot Bucha fans.

“They’re not likely to be confused because one is such a premium product and the other a generic one that’s a $5 wine,” says Strumlauf. “They’re very different products appealing to very different consumers.”


 

Not a Fair Fight

Two companies want to use the barefoot trademark for their products, both of which are beverages. The similarities pretty much end there.

Gallo

Revenue: $4.1 Billion
Sales in Bottles, 2014: 246 Billion
Employees: 5,000

Barefoot Bucha

Revenue: Less than $500,000
Sales in Bottles, 2014: 65,614
Employees: 4.5

 

The best-case scenario, the Zuckermans say, would be to reach a settlement to co-exist with Gallo. Initial discussion with Gallo came up short, however. “We felt it was very, very restrictive,” says Kate. “It wasn’t comfortable for us.”

“We are currently in discussions with Barefoot Bucha and are hoping to find a resolution that will satisfy both parties,” said Gallo spokesperson Natalie Henderson by e-mail in early November.  “We cannot comment further at this time.”

So now begins the discovery process for the Zuckermans’ trademark case, and the legal bills will start mounting.

And they know this would all go away if they changed their company’s name. But they, too, feel like they’ve built a brand. “People recognize our name as a quality organic product,” says Kate. “It’s a name we picked for a reason—a small footprint. We picked barefoot because we want to be light on the earth.”

Photo by: Tom McGovern

 

 

Speak up

Author

Lisa Provence

Lisa Provence is an award-winning journalist who has written local news for C-VILLE Weekly and the Hook for the past 19 years.