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.
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.
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.
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.
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.
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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.