I read the article outlining the complaint filed by Duckhorn Wine Co. of St. Helena against Duck Walk Vineyards, and I feel particularly compelled to blog about the complaint by means of both legal interest and personal significance. (I spent some of my childhood summers on the eastern end of Long Island, and I am somewhat familiar with Duck Walk Vineyards, but I am especially interested in the area of intellectual property.) According to Duckhorn asks N.Y. Winery to Modify Label and Sales, Duckhorn Wine Co. filed a complaint against Duck Walk Vineyards on January 15, 2013 in Napa County Superior Court. The complaint alleges breach of contract (specifically relating to trademark), which required Duck Walk Vineyard to mention its geographical indication on the front of its labels. Furthermore, the complaint alleges the failure of Duck Walk Vineyards to provide the location of the vineyard on its wine labels lead to consumer confusion. Duckhorn demands Duck Walk Vineyards alter its labels and halt sales of 50% of its wines outside of New York, New Jersey, and Connecticut. Id.
Duckhorn’s lawyer stated that Duck Walk Vineyards did not follow a 2003 court settlement in which Duck Walk agreed to several constraints, including placing the vineyard’s place of origin on the front label. “Under the settlement, Duck Walk also agreed not to produce and/or bottle more than 84,000 gallons of wine with the word ‘Duck’ or pictures of ducks on the label unless they’re part of the corporate name ‘Duck Walk Vineyards Inc.’” See Duckhorn asks N.Y. Winery to Modify Label and Sales. The lawyers for Duck Walk argue that Duckhorn does not own the word “Duck.”
It is true that Duckhorn and Duck Walk Vineyards both sell wine in the United States, at especially different price points, but to the extent that their products are “similar” to cause even remote disorientation among consumers is a rather weighty argument. A quick search of the TTB COLA database, restricting results to wine and fortified wine labels, indicates that there are over 400 labels since February of 2007 that use the word “DUCK” on either the fanciful name or brand name of the label. (Editor’s note: the aforementioned results are of labels that, to a greater percentage, are from Duckhorn Vineyards; additionally, not all labels from other vineyards with the word “DUCK” also include images of a duck or ducks on the label, but most of the labels do.)
Finally, the word “DUCK” is what trademark attorneys would say is a generic term—meaning, the word “DUCK” is of common use (a word one would find in a dictionary). And, because I think it is necessary, a closer look at some of the labels at issue: a Duckhorn label and a Duck Walk label. To what extent do these labels look like they originated from the same producer? And some other vineyards that use the term “DUCK” on their labels, just to confirm the presence of “DUCK” on multiple labels: Duck Pond, Butterducks, and Diving Duck. To what degree do any of these labels promote consumer confusion?