New Case Asks When Does a Label Cross the Line From Homage to Trademark Infringement?
Keeping someone else from trading on your name is one of the many functions of trademark law. When you’ve spent time and effort developing a brand, finding someone looking to cash in on your hard work can be irksome. But the line between homage and trying to make a buck off someone else’s rep can be blurry.
That blurred line is at the heart of a recent case filed in the Northern District of Alabama by Chautauqua Vineyards and Winery over their “Champions” Series of Wines.
The wines appear to have labels styled closely on the color schemes and themes of various college mascots. So much so that the label to the left below caught the attention of the University of Arkansas whose mascot is to the right.
After several cease and desist letters from the University and its colleagues, Chautauqua filed its own suit in Alabama seeking a declaration that there’s no harm and no foul. You can read the suit and the letters here.
The main assertions from the suit seek a determination about the issues raised in the cease and desist letters:
It is undisputed that the Hog Wine Label contains the name of its creator, Jennifer Harwell Art, and does not contain “Razorback,” “Arkansas,” or any reference to the University of Arkansas in any way. Further, it is undisputed that the Plaintiffs are not in competition with Defendants because the University of Arkansas does not produce, manufacture, distribute or sell wine; or any other kind of alcoholic beverage. Finally, there has been no evidence of, or potential for, actual confusion in the marketplace because graduates of the University of Arkansas and/or fans of their athletics are aware that the University of Arkansas does not produce, manufacture, distribute or sell wine.
The sale and/or offering for sale of the Chautauqua wines with the Hog Wine Label is not likely to cause confusion, to cause mistake or deceive the consuming public as to the source of origin, sponsorship and/or affiliation of the Hog Wine Label or of the goods and services of the Plaintiffs and Defendants.
Filing a preemptive request for a determination served to give Chautauqua its choice of preferred venue and called the University to the carpet – a classic put-up-or-shut-up. Sometimes the cease and desist letter can spark a different kind of action than what you might have intended.