Westside Windery v. Sans Liege - grasshopper wine trademark complaint.pdf
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8/19/2019 Westside Windery v. Sans Liege - grasshopper wine trademark complaint.pdf
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Jon A. Birmingham (CA SBN 271034)
FITCH, EVEN, TABIN & FLANNERY LLP21700 Oxnard Street, Suite 1740
Los Angeles, California 91367
Telephone: (818) 715-7025
Facsimile: (818) 715-7033Email: [email protected]
Attorney for Plaintiffs
WESTSIDE WINERY LLC AND THACHER WINERY & VINEYARD, I NC. D/B/A THACHER
WINERY
UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA
WESTSIDE WINERY LLC AND THACHER
WINERY & VINEYARD, I NC. D/B/A/
THACHER WINERY,
Plaintiffs,
v.
SANS LIEGE I NC., THE FABLEIST WINE
COMPANY, 22 HUNDRED CELLARS, I NC.
D/B/A FIELD R ECORDINGS WINERY, CURT
SCHALCHLIN, AND A NDREW JONES,
Defendants.
Civil Action No.
COMPLAINT FOR TRADEMARK AND TRADE
DRESS INFRINGEMENT AND UNFAIR
COMPETITION
DEMAND FOR JURY TRIAL
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COMPLAINT
Plaintiffs, Westside Winery LLC and Thacher Winery & Vineyard, Inc. d/b/
Thacher Winery (individually and collectively referred to herein as “Thacher Winery”)
bring this suit for trademark and trade dress infringement and federal, state and commonlaw unfair competition against Defendants, Sans Liege Inc., The Fableist Wine Company
22 Hundred Cellars, Inc. d/b/a Field Recordings Winery, Curt Schalchlin, and Andrew
Jones, and alleges as follows:
NATURE OF ACTION, JURISDICTION AND VENUE
1. This Court has original subject matter jurisdiction over this action pursuant to
28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121. This Court has original subjec
matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a) and 15
U.S.C. § 1121.
2.
This is a complaint for trademark and trade dress infringement and unfai
competition arising under Section 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 an
l125(a) regarding use of Defendants’ mark for wine products and services, which i
identical, indistinguishable or highly similar and confusingly similar to Thacher Winery’
common law Grasshopper marks used in connection with wine products and services and
federally registered Grasshopper marks for wines.
3.
This Court has supplemental jurisdiction over the state law claims pursuan
to 28 U.S.C. §§ 1338(b) and 1367(a) as all claims herein form part of the same case o
controversy.
4.
This Court has personal jurisdiction over Defendants because, among othethings, Defendants conduct and solicit business in this jurisdiction and, on information
and belief, are residents in this jurisdiction and/or have committed at least some of the
conduct discussed herein in this district.
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5. Venue is proper in this district under 28 U.S.C. § 1391(b) as Defendants are
resident in this district and a substantial part of the events giving rise the claims herein
occurred in this district.
PARTIES
6.
Westside Winery LLC, which has done business as Thacher Winery, is
California Limited Liability Company having a principal place of business at 835
Vineyard Drive, Paso Robles, California 93446. Westside Winery LLC is the owner o
premises and assets used in vineyard agriculture and wine production, including but no
limited to trademarks, trade identity, and trade dress asserted in this complaint.
7. Thacher Winery & Vineyard, Inc. d/b/a Thacher Winery is a California
corporation having a principal place of business at 8355 Vineyard Drive, Paso Robles
California 93446. Thacher Winery & Vineyard, Inc. d/b/a Thacher Winery is in th
business of vineyard agriculture and wine production with sales and distribution o
produced wine and related products and services, all as the authorized user of trademarks
trade identity, and trade dress asserted in this complaint.
8.
On information and belief, Sans Liege Inc. is a California corporation having
a place of business at 870 Price St., Pismo Beach, California 93449. On information an
belief, Sans Liege Inc. is in the business of wine production with sales and distribution o
produced wine. On information and belief, Sans Liege Inc.’s wine products and service
are sold in competition with Thacher Winery’s products and services.
9. On information and belief, Curt Schalchlin is an individual residing and
doing business in the State of California, having a principal place of business at 870 PricSt., Pismo Beach, California 93449. On information and belief, Curt Schalchlin is in th
business of wine production with sales and distribution of produced wine. On informatio
and belief, Curt Schalchlin’s wine products and services are sold in competition with
Thacher Winery’s products and services.
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10. On information and belief, The Fableist Wine Company, formerly named
Cane & Fable Wines, Inc., is a California corporation having a place of business at 460
Marquita Ave., Paso Robles, California 93446 and an agent for service at 100 Wes
Broadway, Suite 100, Glendale, California 91210. On information and belief, ThFableist Wine Company is in the business of wine production with sales and distribution
of produced wine. On information and belief, The Fableist Wine Company’s win
products and services are sold in competition with Thacher Winery’s products an
services.
11. On information and belief, Andrew Jones is an individual residing and doin
business in the State of California, having a place of business at 460 Marquita Ave., Paso
Robles, California 93446. On information and belief, Andrew Jones is in the business o
wine production with sales and distribution of produced wine. On information and belief
Andrew Jones’ wine products and services are sold in competition with Thacher Winery’
products and services.
12. On information and belief, 22 Hundred Cellars, Inc. d/b/a Field Recording
Winery is a California corporation having a place of business at 460 Marquita Ave., Paso
Robles, California 93446. On information and belief, 22 Hundred Cellars, Inc. is in th
business of vineyard agriculture and wine production with sales and distribution o
produced wine. On information and belief, the wine products and services of 22 Hundre
Cellars, Inc. d/b/a Field Recordings Winery are sold in competition with Thache
Winery’s products and services.
FACTS COMMON TO ALL COUNTS 13. Thacher Winery was founded in 2004 in Paso Robles, California.
14. Thacher Winery began vineyard agriculture operations and producing wine
at least as early as 2004 in connection with a Grasshopper mark for its business, trade
identity, trade dress, packaging and product labeling, and in marketing and othe
promotional information and materials.
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15. The image of the grasshopper is associated with the name “Thacher” and i
part of the traditional Thacher family crest.
16. From the time that Thacher Winery began vineyard agriculture operation
and producing wines, the wine industry and the wine consuming public have knownThacher Winery to use the distinctive, non-functional image of a grasshopper as trad
dress on its wine label and elsewhere, such that Thacher Winery has come to be known a
“the Winery with the Grasshopper label” and “the Wine with the Grasshopper label,” o
the like.
17. Based on Thacher Winery’s extensive and exclusive use of its Grasshoppe
mark and filing of Application No. 78850669 on March 30, 2006 for its THACHER
WINERY and Grasshopper mark on wine labelling with use in commerce at least as early
as November 1, 2006, the United States Patent and Trademark Office on October 21, 200
issued to Thacher Winery Registration No. 3522613 for the mark:
specifying “Wine.” A photocopy of this referenced Registration is attached as Exhibit A.
18.
The specimen of use from the file history of Registration No. 3522613
below, presents the typical trade dress for how Thacher Winery has used and continues to
use the Grasshopper mark on bottle labels:
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19. Beginning with certain 2011 and 2012 vintages of wine, Thacher Winery
introduced an updated Grasshopper mark on wine labelling and elsewhere beginning a
least as early as June 22, 2013, and based on Thacher Winery’s extensive and exclusive
use in commerce of its updated Grasshopper mark and filing of Application No. 8623825on April 1, 2014, the United States Patent and Trademark Office on October 28, 2014
issued to Thacher Winery Registration No. 4628609 for the mark:
specifying “Wine.” A photocopy of this referenced Registration is attached as Exhibit B.
20.
The specimen of use from the file history of Registration No. 4628609
below, presents the typical trade dress for how Thacher Winery has used and continues to
use the updated Grasshopper mark on bottle labels:
21. Thacher Winery has actively and consistently promoted its Grasshoppe
marks in connection with branded products and services in the United States through sale
of wine products and related souvenirs and merchandise, through operating wine tastin
onsite and at public events, through advertising, publicity and social media, and through
offering and hosting onsite wedding and corporate events. Through its efforts, the Thache
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Winery has established and is further establishing, substantial goodwill and valuabl
trademark rights in the Grasshopper mark.
22. Based on Thacher Winery’s longstanding use of the Grasshopper marks fo
wine products and services and ownership of Registration Nos. 3522613 and 4628609 fowine (the marks, the trade dress and the common law rights and statutory rights in th
marks are herein comprehensively referred as the “Grasshopper marks”), the relevan
public trading in or purchasing such goods and services, have long ago come to recogniz
the “Grasshopper” term, grasshopper image and trade dress as being exclusive source
identifiers for Thacher Winery goods and services.
23. The Defendants Sans Liege Inc., The Fableist Wine Company, 22 Hundred
Cellars, Inc. d/b/a Field Recordings Winery, Curt Schalchlin, and Andrew Jones all reside
and operate their wine related businesses in and around Paso Robles, the same city in
California where Thacher Winery established and operates its winery and related
business.
24. Long after Thacher Winery established U.S. rights in the Grasshopper mark
by use and registration, the Defendants Sans Liege Inc., The Fableist Wine Company, 22
Hundred Cellars, Inc., Curt Schalchlin, and Andrew Jones collaborated in the production
sale and distribution of wine having the image of a grasshopper as a source identifying
mark (the trade dress and mark are herein comprehensively referred as “Defendants
mark”) prominently displayed on labelling, as displayed below:
25.
On information and belief, the Defendants first sold 2013 vintage wine
having the Defendants’ mark on labelling on or about September 2014.
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26. On information and belief, since the time that Defendants began using th
Defendants’ mark for wine, the Defendants have promoted the wine in close connection
with the term “Grasshopper” and the image of a grasshopper on wine labels and
elsewhere.27.
The Defendants had prior actual knowledge or had reason to know of the
Grasshopper marks belonging to Thacher Winery.
28.
The Defendants have not received consent from Thacher Winery to sell win
with the Defendants’ mark.
29. The Defendants’ mark is indistinguishable from and highly similar to th
Thacher Winery’s Grasshopper marks.
30.
The Defendants have used and are using the Defendants’ mark to sell wine
products in the same markets and channels, including but not limited to the same retai
outlets, in which Thacher Winery sells products and services and to sell to the sam
customers to whom Thacher Winery is selling or attempting to sell.
31. On information and belief, the Defendants have had at all relevant time
specific knowledge of the Grasshopper marks belonging to Thacher Winery and despit
this specific knowledge, the Defendants introduced wine products and continue to
promote, sell and distribute wine products in connection with the Defendants’ mark in th
same markets and channels in which Thacher Winery sells products and services and to
sell to the same customers to whom the Plaintiffs are selling or attempting to sell.
32.
The Defendants’ infringement of the Grasshopper marks and trade dress ha
caused consumers to mistake the Defendants’ mark as identifying wine originating from
or affiliated with Thacher Winery.33. Defendants’ infringement of the Grasshopper marks is causing actua
confusion in the marketplace, and will continue to cause actual and likely confusion in th
marketplace, regarding the source, origin and/or affiliation of the Defendants’ product
with the products and services of Thacher Winery.
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34. Thacher Winery notified the Defendants that their infringement of th
Grasshopper marks is causing actual and likely confusion with the Thacher Winery
Grasshopper mark and causing irreparable damage to Thacher Winery.
35.
Despite actual notice and reasonable time to cease infringement, theDefendants have continued use of the infringing Defendants’ mark.
36.
All the foregoing acts of the Defendants have caused damage to Thache
Winery, and unless restrained by this Court, will continue to cause, serious and irreparabl
injury, including, but not limited to, loss of competitive advantage, loss of busines
reputation and goodwill, loss of sales and profits, and other losses, for which Thache
Winery has no adequate remedy at law.
COUNT I
INFRINGEMENT UNDER LANHAM ACT
37.
Thacher Winery incorporates by reference herein paragraph nos. 1-36.
38. Without consent of Thacher Winery, each of the Defendants have used, in
connection with the sale, offering for sale, distribution or advertising of the infringing
products, a mark that infringes upon the registered marks of Thacher Winery.
39. On information and belief, these acts of infringement have been committed
with the intent to cause confusion, mistake or deception, and are in violation of 15 U.S.C
§ 1114.
40.
The foregoing acts of the Defendants constitute willful infringement o
registered marks in violation of the Lanham Act, 15 U.S.C. § 1114.
41.
As a direct and proximate result of the infringing activities of each and all othe Defendants, Thacher Winery has suffered substantial damage.
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COUNT II
FALSE DESIGNATION OF ORIGIN UNDER LANHAM ACT
42. Thacher Winery incorporates by reference herein paragraph nos. 1-41.
43.
The conduct of each and all Defendants constitutes the use of words, termssymbols or devices to falsely describe the infringing products, within the meaning of 1
U.S.C. § 1125(a)(1). The Defendants’ conduct has caused and is likely to caus
confusion, mistake, or deception by or in the public as to the affiliation, connection
association, origin, sponsorship or approval of the infringing products to the detriment o
each and both of the Plaintiffs and in violation of 15 U.S.C. § 1125(a)(1).
44. The foregoing acts of the Defendants constitute willful false designation o
origin and violation of the Lanham Act, 15 U.S.C. § 1125(a).
45.
As a direct and proximate result of the infringing activities of each and all o
the Defendants, Thacher Winery has suffered substantial damage.
COUNT III
COMMON LAW UNFAIR COMPETITION
46.
Thacher Winery incorporates by reference herein paragraph nos. 1-45.
47. Without consent of Thacher Winery, each and all of the Defendants hav
used, in connection with the sale, offering for sale, distribution or advertising of the
infringing products, marks and trade dress that infringe upon marks and trade dres
belonging to and used by Thacher Winery.
48. The foregoing acts of the Defendants constitute willful trademark
infringement and unfair competition in violation of the common law of California and/oother States.
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COUNT IV
CALIFORNIA BUSINESS & PROFESSIONS CODE
49. Thacher Winery incorporates by reference herein paragraph nos. 1-48.
50.
On information and belief, each and all of the Defendants in the course otheir business caused and are causing likelihood of confusion and misunderstanding as to
the source of Defendants’ goods and services.
51.
The foregoing acts of the Defendants constitute willful trademark and trad
dress infringement and unfair competition in violation of the California Business and
Professions Code Section 17200 et seq.
PRAYER FOR RELIEF
WHEREFORE, Thacher Winery prays for the following relief:
1)
A preliminary injunction ordering that each of the Defendants, and any of it
principals, officers, directors, shareholders, owners, affiliates and subsidiaries, and al
others acting in concert or participation with the Defendants, shall not use, directly o
indirectly, the Defendants’ mark, or any other mark that is confusingly similar to th
Grasshopper marks;
2) A permanent injunction ordering that each of the Defendants, and any of it
principals, officers, directors, shareholders, owners, affiliates and subsidiaries, and al
others acting in concert or participation with the Defendants, shall not use, directly o
indirectly, the Defendants’ mark, or any other mark that is confusingly similar to th
Grasshopper marks;
3)
An award of damages, including prejudgment interest, sustained by ThacheWinery as a result of the wrongful acts of the Defendants;
4) An increase and/or trebling of damages pursuant to 15 U.S.C. § 1117, or any
other applicable statutory or common law basis;
5)
An accounting of any and all profits derived from the wrongful acts of th
Defendants;
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6) An award of costs and attorney's fees pursuant to 15 U.S.C. § 1117 or any
other statutory or common law basis; and
7) Such other and further relief as the Court may deem just and proper.
Respectfully submitted,
Westside Winery LLC and Thacher Winery &
Vineyard, Inc. d/b/a Thacher Winery
Date: March 22, 2016 /s/ Jon A. Birmingham
Jon A. Birmingham
FITCH, EVEN, TABIN & FLANNERY
21700 Oxnard Street, Suite 1740Los Angeles, CA 91367
Telephone: (818) 715-7025
Facsimile: (818) 715-7033
Attorney for Plaintiffs
731342
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DEMAND FOR JURY TRIAL
Plaintiffs hereby request a jury trial on all issues raised in this complaint.
Respectfully submitted,
Westside Winery LLC and Thacher Winery &
Vineyard, Inc. d/b/a Thacher Winery
Date: March 22, 2016 /s/ Jon A. Birmingham
Jon A. Birmingham
FITCH, EVEN, TABIN & FLANNERY
21700 Oxnard Street, Suite 1740Los Angeles, CA 91367
Telephone: (818) 715-7025
Facsimile: (818) 715-7033
Attorney for Plaintiffs
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