On February 27, 2014, the Napa Valley-based vineyard Madison Vineyard Holdings, LLC, the owner of Jamieson Ranch, filed a complaint against Pernod Ricard’s Irish Distillers Limited, owner of the renowned Jameson Irish Whiskey, in the United States District Court Northern District of California. See Madison Vineyard Holdings, LLC vs. Irish Distillers Limited. The suit follows the receipt of a cease-and-desist letter sent by Irish Distillers to Madison Vineyard Holdings, the owner of Jamieson Ranch, last month. According to Jameson Clashes with Jamieson Over Name, the letter issued by Irish Distillers on or around February 25, 2014 stated that “Jamieson” is “confusingly similar” to “Jameson” and is likely “likely to cause consumer confusion and/or the appearance that your client’s business originates from or is endorsed or authorised by Irish Distillers,” the use of which is likely to dilute the mark “Jameson.” See Jameson Clashes with Jamieson Over Name (quoting the original Irish Distillers cease-and-desist letter). Accordingly, Irish Distillers urged Madison Vineyard Holdings to cease use of the Jamieson mark, confirm (in writing) that the mark would not be used in the future and that Irish Distillers owns the Jameson mark, and account for the amount of revenue secured from the Jamieson mark (as well as sales of services in Napa) so that Irish Distillers could assess the damages. See Irish Distillers In Trademark Dispute With U.S. Winemaker; see also Pernod Faces Trademark Clash Over Wine Firm’s ‘Jamieson’ Brand.
The Napa Valley-based vineyard changed its name from Reata Winery to Jamieson Ranch in mid-2013 and started to sell wine under the Jamieson label in or around September 2013. See Madison Vineyard Holdings, LLC vs. Irish Distillers Limited, at 3. Madison filed for a new trademark with the USPTO on February 15, 2013. According to the complaint, after reviewing the trademark application, the USPTO examining attorney found no conflicting marks that would bar the registration of Jamieson. Id. On December 3, 2013, the mark JAMIESON RANCH VINEYARDS was published for review in the Trademark Official Gazette. Id. On December 19th, Irish Distillers subsequently filed a request for a 90-day extension of time to oppose the mark and USPTO granted said request, extending the time to oppose to April 2, 2014. Id. Shortly thereafter, its counsel issued the aforementioned cease-and-desist letter, after which Madison Vineyard Holdings filed said complaint for declaratory relief.
In the complaint, Madison asserts the following:
- There is no likelihood of confusion between the marks, and Madison’s use of Jamieson Ranch Vineyards does not infringe the trademark rights of Irish Distillers; further, Madison seeks declaratory judgment certifying Madison’s rights to continue to use the Jamieson Ranch Vineyards mark with respect to its wine products and vineyard;
- Madison’s use of the Jamieson Ranch Vineyards mark on wine does not constitute trademark dilution and thus seeks declaratory judgment certifying Madison’s rights to continue to use Jamieson Ranch Vineyards with respect to its wine products and vineyard; and
- The vineyard’s use of Jamieson Ranch Vineyards with respect to its wine and vineyard does not establish trade dress infringement, thus Madison seeks declaratory judgment certifying its rights to continue to use the term Jamieson Ranch Vineyards with respect to its wine products and vineyard.
Id. at 4–5.
The interesting aspect about this case is the sheer willingness and bravado of a smaller producer (here, Jamieson Ranch) to take on a legal battle against an extremely endowed corporate company like Pernod Ricard. The Ranch does ask, in its complaint for declaratory relief, that the Irish Distillers reimburse its counsel fees. Perhaps this suit is Jamieson’s way of showing it will not be victim to what Jamieson Ranch may deem to be a means of intimidation. Still, perhaps fighting this battle is considerably economical in comparison to pursuing another name change, and all of the repercussions that inevitably come with a new business name.
To find in favor of likelihood of confusion, a court would consider several factors, commonly referred to as the DuPont factors in the federal circuit, including (but not limited to) the following: strength of the prior mark (here, Jameson); similarity of the marks with respect to appearance, sound, connotation, or commercial impression; similarity of the products or services; the intent of Jamieson in adapting its mark; evidence of actual confusion by consumers; number and nature of similar marks; and the sophistication of the buyers. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In this case, there are certainly a number of arguments that can be made in favor of either party. Irish Distillers will likely argue the strength of its mark through evidence including sales history, global recognition, and advertisements to establish that the mark has acquired secondary meaning, as well as point to the similar trade channels and the marks’ similarity in sound. Jamieson may argue that the wine market tends to contain sophisticated buyers, individuals who have a greater tendency to be informed purchasers and may be less likely to confuse and/or associate the Jamieson mark with the Jameson whiskey mark.
What do you think? Jamieson versus Jameson—are the names too close for comfort, or is it quite unlikely a consumer would confuse and/or associate the two marks?
DISCLAIMER: This blog post is not intended as legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.