Practices

Intellectual Property

Overview
Representative Matters
Clients
Related Content

Overview

The Intellectual Property (IP) Department at DP&F provides clients with counseling and representation on all aspects of trademark, copyright, false advertising, Internet, trade secret and unfair competition law, both domestically and internationally. DP&F’s intellectual property clients include small, local businesses, trade associations, large multinational companies and foreign entities doing business in the United States.

The IP Department advises clients on the adoption and availability of trade names, trademarks and service marks, and files and prosecutes applications for the registration of marks in the Patent and Trademark Office and the registration of copyrights in the Copyright Office. Lawyers in the group also represent clients before the Patent and Trademark Office in opposing and canceling the trademark applications and registrations of third parties.

DP&F maintains a network of international associates so that it can apply for trademark registrations and protect clients’ intellectual property rights in any country in the world. By utilizing the most advanced proprietary database systems available in the industry, DP&F provides its clients with seamless management and maintenance of their intellectual property dockets.

DP&F also provides counseling to its clients on protection strategies for their intellectual properties and trade secrets, assessment of unfair competition issues, legal advice and representation on the acquisition and licensing of intellectual property, and counseling on Internet domain name and false advertising issues.

The IP Department polices and enforces clients’ intellectual property rights against infringement by third parties, and defends clients against such infringement claims by others. DP&F’s lawyers have represented clients in litigation related to copyright, trademark, trade dress and certification mark infringement, false advertising, unfair competition, and violation of trade secrets in California state courts and federal courts throughout the United States.

DP&F’s IP practice complements its special expertise in legal issues affecting the wine industry and other alcohol beverages. DP&F’s IP lawyers have represented wineries and vineyards, as well as brewers and spirits producers, on a wide array of specialized IP issues, including branding, geographical indications, vineyard designations, and protection of label designs and bottle and packaging configurations.

Representative Matters

Management of Sutter Home Winery Trademark Portfolio – All of Sutter Home Winery’s trademarks are cleared, maintained and enforced by DP&F’s IP Department. DP&F maintains the U.S portfolio of over 150 trademarks for Sutter Home and is also responsible for maintenance of the company’s trademarks in over 50 foreign countries. DP&F is also responsible for Sutter Home’s trademark enforcement and has represented the company in infringement actions in federal court and inter partes proceedings before the USPTO.

Accolade Acquisition of Ascentia Brands – DP&F’s IP Dept. represented Accolade Wines North America in due diligence related to acquisition of the GEYSER PEAK, ATLAS PEAK and XY ZIN wine brands from Ascentia Wine Estates. The DP&F IP Dept. also assisted the firm’s business department with the preparation of the Asset Purchase Agreement for the intellectual property related to the brands. The IP Dept. is also responsible for maintaining the trademark portfolio for all of Accolade’s brands in the United States, including for Accolade’s interests in Australia, New Zealand, South Africa and Europe.

Inter Partes Judgment in Favor of Joel Gott Wines – In 2013, DP&F obtained a judgment in favor of Joel Gott Wines before the USPTO Trademark Trial and Appeals Board (“TTAB”). DP&F, on behalf of Joel Gott Wines, owner of the marks GOTT and JOEL GOTT for wine, opposed the trademark application for GOTT LIGHT and Design for water. The TTAB ruled in Joel Gott Wines’ favor finding the marks to be confusingly similar and refused registration of the GOTT LIGHT and Design mark for water. See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424 (TTAB 2013)

Successful Representation of Thomas Keller Restaurant Group – TK Management of Thomas Keller Restaurant Group (“TKRG”) is owner of the famous mark BOUCHON for restaurant services and various food products sold through Williams-Sonoma stores. When a Richmond, Virginia restaurant opened under the identical name and mark BOUCHON and refused repeated requests to cease use, DP&F initiated an infringement action in the Eastern District of Virginia on behalf of TKRG and successfully resolved the dispute with the Virginia restaurant agreeing to change its name.

Clients

Our Intellectual Property clients include: