Trademark for Wine vs. Vodka: Court Issues Preliminary Injunction

On March 9, 2015, the U.S. District Court for the Central District of California issued a preliminary injunction to White Oak Vineyards & Winery, LLC against White Oak Spirits LLC enjoining the spirits producer from use of the term WHITE OAK on vodka based on likelihood of consumer confusion with the mark WHITE OAK for wine.  A copy of the decision may be found here.

While we have frequently written about the trend at the USPTO to find wine and spirits to be related goods for purposes of finding likelihood of confusion, we have not seen the same prevalence of findings in federal court decisions related to infringement.  Thus, this decision is notable in such regard.

The marks in this case were virtually identical: WHITE OAK for wine vs. WHITE OAK PREMIUM VODKA for vodka.  While defendant argued that the use of the words “premium vodka” with WHITE OAK would distinguish its brand from that of Plaintiff, the court found that consumers would focus on the distinctive portion – WHITE OAK – and give little consideration to the generic terms.  Defendant also failed to convince the court that the distinctive labels of the products (see below) would allow consumers to distinguish between the goods, mainly because the court found that the products may also be ordered from wine lists in restaurants and bars or through other avenues where the labels would not be visible.

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As far as the relatedness of the goods, the court noted that consumers would not believe one product to be the other, but rather that consumers may believe that the two products came from the same source or producer.  The court cited to evidence submitted by plaintiff of the Napa producer of DOMAINE CHARBAY which produces both wine and spirits under the same mark.  We have also noted in this blog that there is a current trend of the same brands appearing on wines and spirits which reflects a changing landscape on the issue of relatedness under trademark law.  Below are a few more examples:

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What is notable about the court’s opinion is that it expressly stated that it was not establishing a per se rule as to the relatedness of wine and spirits and specifically noted that on the totality of the facts – “namely, that the names of the two products are identical – the goods are sufficiently related for a likelihood of confusion to arise.”  So does this mean that spirits and wine will be found to be related when the marks are not identical?  Maybe.  It will depend on the marks and the degree of similarity.  However, what is clear is that going forward wineries and distilleries should not rely on any perceived marketplace differences between their goods to adopt marks that are identical to marks on goods in the other sector.

Two other takeaways from this opinion: 1) the distillery first approached the winery for a consent to register its mark after its trademark application was refused by the USPTO and winery’s response was a demand to stop use; a lesson as to potential implications in approaching other parties for consent agreements; and, 2) for all of you trademark geeks, the court issued a preliminary injunction despite the recent Ninth Circuit decision in Herb Reed Enterprises requiring that irreparable harm be grounded in evidence and not be speculative; while the court noted that harm could not be presumed, the court found that plaintiff’s loss of control over its mark would cause irreparable harm, which is essentially what the presumption once was ….