Napa Valley vintner Shafer Vineyards recently filed suit against Angwin, California winery owner, Mike Beatty (doing business as Howell Mountains Vineyards) for use of the term Hillside Select on its wine. Shafer Vineyards—who according to the USPTO database registered the mark Hillside Select in January 1990—alleges Mr. Beatty used the Napa Valley vintner’s registered mark Hillside Select on wines produced by the Angwin winery. The complaint was filed in Napa County Superior Court in December and alleges federal and state trademark competition and likelihood to cause confusion, as well as unfair competition.
Shafer Vineyards’ signature wine is a cabernet sauvignon (dubbed Hillside Select) and its 2010 vintage sells for about $250. See Shafer Vineyards 2010 Hillside Select® Cabernet Sauvignon. According to the complaint, defendant was selling a red wine called Hillside Select; plaintiff demands that defendant stop using the name Hillside Select on its wines, as well as pay triple damages suffered by Shafer in addition to attorney fees, interest, and other costs. See Shafer Vineyards Sues Angwin Vintner Over Wine Name.
After searching ShipCompliant’s LabelVision, I found at least two other label approvals with the term “Hillside Select” within the class of wine. While one of those approvals does not currently seem to be used in commerce (if ever), the remaining approval seems to have been used on a previous cabernet sauvignon vintage several years ago. (It is not clear if this latter approval is still being used by the particular COLA owner.)
In this case Howell Mountains Vineyards was not attempting to register “Hillside Select” as a word mark, however the above still illustrates the importance of running a trademark clearance search before attempting to register a mark on the USPTO or state databases. If Howell Mountains Vineyards were seeking to register the mark “Hillside Select,” a trademark clearance search on the federal level would have returned results indicating that such mark was already registered to Shafer Vineyards on the USPTO database. The term “Hillside Select” seems to have been used by Howell Mountains Vineyards more as a fanciful name for the wine, and not necessarily as a brand or vineyard name, however the laws governing trademark still hold strong here. Perhaps it is worth noting that, in the case of wines, a proprietor should consider registering or conducting a clearance search for fanciful names.
For more information on wine or alcohol law, labeling, or trademark, please contact Lindsey Zahn.
Note: On Wednesday, January 21st, Decanter reported that Shafer “reached an amicable settlement” with Howell Mountains Vineyard with respect to “Hillside Select.” See more here.
DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.