The webbed feet of the wine world are preparing for battle in the wine trademark infringement wars. Wine labels Duckhorn and Duck Commander are on the battlefield, as they square off over use of a duck and the word “duck” for Duck Commander wines. The wine is derived from the A&E Duck Dynasty series. The winemaker Sutter Home famed for its show stopping white zinfandel, and retailer Wal Mart were also sued.
Recent reports in The Press Democrat paint Duckhorn Vineyards as overreaching its rights in the trademark Duckhorn by this lawsuit against a non-identical mark. They also question Duckhorn’s right to protect a duck for use on wine. All this quacking lead me to review the complaint Duckhorn Winery filed. I wanted to just which quack has the best chance of sounding like music in the judge’s ear. While not all the facts have been proven, there are certain facts in the complaint as well as legal doctrines that will be at issue.
This case can teach why a good brand protection and enforcement program is important. Protecting their brands is something wineries often fail to do, but Duckhorn heeded the call.
Duckhorn Vineyards is doing what trademark owners are expected to do. Trademark owners have a duty to police their mark lest their rights be weakened by use of the same or similar marks by new entrants into the market. Brand Hung by the Tongue. The fact that Duckhorn has done its duty in the past to protect its rights against other users does not justify labeling them as a “trademark bully.”
Marks need not be identical in order for their to be a legitimate claim of trademark infringement. Duckhorn has been using its Duckhorn mark, and its drawing of a duck on wine for over 30 years so its name clearly has some consumer recognition. Use of the duck for 30 years in association with wine may also support their claims that consumer associate a duck with their brand. However, Duckhorn does not a have design registration for its duck, which is a bit surprising. Yet, consumer recognition, together with proof of sales may well give Duckhorn superior legal rights as well as bragging rights over rights a wine from the same family as white zinfandel.
Duckhorn has also asserted claims for dilution of its marks. Dilution is a legal remedy available only to “famous” marks, reserved for brands that can provide convincing evidence that they have attained an exalted status. Once a mark is held to be “famous” the dilution doctrine allows the mark to leap across unrelated product lines to receive protection. Famous marks can also claim their reputation has been tarnished. If Duckhorn were truly famous, that might be the best claim in this case given the type of wine being sold. While dilution claims are often bantered about in court filings, success on the merits is limited to mega brands like Apple, Tiffany, or the Golden Arches, ones that are in fact famous in the minds of the consumers. What if Starbucks suddenly appeared as the name of a new line of automobiles? While it sounds absurd, should that happen, Starbucks would likely prevail were it to assert the dilution doctrine.
The defendants will undoubtedly make a lot of noise about the number of other wineries using a duck or which have the word “duck” in them, if any. The more interesting and complicated argument will have to do with how dissimilar the labels are themselves, and what effect that has upon where consumers are likely to be confused.
Last but not least, if the class of consumers and marketing channels is an issue (which it often is), and taste of the wine is considered Duckhorn’s chances may be dimmed. Is the Walmart shopper seeing Duck Commander Merlot likely to confuse it for Duckhorn. Having tasted both, I can say, one taste would dispel any remaining doubts.
Other wineries have found themselves up the trademark creek without a registration. They failed to properly register or to engage expert trademark counsel to develop a brand protection program. Many a label has been sued over use of a wine mark. Last year, I represented Calcareous Winery in Paso Robles, who was sued over use of the mark Twisted Sisters. Client Gets Sue. The case involved two parties who had established limited territorial rights prior to registration, raising complicated issues of who owned what state.
Stay tuned for the latest wine trademark quack.