California Winery Tries to Put a Cork in Competitor’s Trademark Infringement - Fordham Intellectual Property, Media & Entertainment Law Journal
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California Winery Tries to Put a Cork in Competitor’s Trademark Infringement

California Winery Tries to Put a Cork in Competitor’s Trademark Infringement

FN Cellars LLC, a California winemaker, has recently been involved in two trademark infringement disputes. The first occurred when Union Wine Co., an Oregon based winery, accused FN Cellars of infringement for its use of the name “Bella Union.” In June of 2014, Union Wine sent a letter warning FN Cellars that “Bella Union” was confusingly similar to “Union Wine Co.”. This threat came more than five months after FN Cellar’s trademark application had cleared its opposition window. FN filed to register the “Bella Union” mark in July of 2013. It has used the mark extensively and continuously since August of 2014. FN Cellars responded that it had not infringed, and Union Wine filed a cancellation proceeding against the “Bella Union” at the Trademark Trial and Appeal Board. 1

FN Cellars did not take this action lightly, and responded in May by filing a federal court complaint seeking declaratory judgment of non-infringement and a cancellation of Union Wine’s registration. FN Cellars agued, “there can be no likelihood of consumer confusion…as the commercial impression of the marks … is completely dissimilar.” FN Cellars went on, “it should therefore come as no surprise that [Union Wine] has never identified a single instance of actual confusion, and FN Cellars is unaware of any such instances of confusion.” 2

Union moved to dismiss that case stating that is had not sufficiently threated FN Cellars to warrant a lawsuit. US District Court Judge James Donato did not buy Union’s argument. “You send a lawyer to say, ‘Stop using the mark.’ You didn’t say ‘Or I will sue,’ but the law doesn’t say you have to. FN had a reasonable apprehension of being sued,” Judge Donato said. 3

The parties settled the dispute outside of court but the terms of the settlement have not been made public. When counsels for the parties were questioned about the terms, they declined to comment citing a confidentiality clause. 4

The dispute with Union Wine Co. is not the only time FN Cellars has had to defend its trademarks against a competitor. FN Cellar’s has been marketing its wine under the “Nick & Nickel” brand for 15 years, using the mark since 2000 and having officially registered the mark in 2001.5 Last year, the vineyard sold 32,000 cases of wine and grossed almost $19 million in sales.6

In August, Klein Foods began using the name Three Nickels for its wine. Klein Foods was issued a trademark for “Three Nickels” in November. Three Nickels is located in Healdsburg, California, which is 40 miles west of Oakville, California where Nickel & Nickel Vineyards is located.7

FN Cellars argued that Klein Foods is purposefully infringing, stating that “ rather than going to the effort and expense of developing and crating its own unique, source-identifying brand name, Klein Foods deliberately and knowingly adopted a mark – the Three Nickels mark – which is confusing similar to plaintiff’s well-know Nickel & Nickel trademarks. FN Cellars further stipulates that Klein intends to sell the wine in the same market as Nickel & Nickel wine brands, which will confuse consumers and dilute the brand.8

The case is currently pending in the US District Court for the Northern District of California.

 


  1. Beth Wagner, Judge Corks Bid To Toss Winemakers’ Trademark Feud, Law 360 (Aug 26, 2015), http://www.law360.com/articles/695771/judge-corks-bid-to-toss-winemakers-trademark-feud [https://perma.cc/XE45-HC2S].

  2. Bill Donahue, Winemakers Settle Spat Over ‘Union’ Trademarks, Law 360 (Oct. 29, 2015), http://www.law360.com/articles/720553/winemakers-settle-spat-over-union-trademarks [https://perma.cc/QJ57-X8QW].

  3. Id.

  4. Id.

  5. Michelle Casady, Vineyard Says Rival Infringed ‘Nickel’ Wine Trademark, Law 360 (Nov 12, 2015), http://www.law360.com/articles/725863/vineyard-says-rival-infringed-nickel-wine-trademark [https://perma.cc/UME2-6UQZ].

  6. Id.

  7. Id.

  8. Id.

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Alex Plaia

Alex Plaia is a second year student at Fordham University School of Law and a staff member of the Fordham Intellectual Property, Media & Entertainment Law Journal. She loves football and plans to take down all of the guys in her fantasy league.