U.S. District Court Judge James Donato didn't buy Union's argument that it was only passing along its perception that consumers might be confused about the similarities between its trademark and FN's Bella Union wine.
“You sent a lawyer to say, 'Stop using the mark.' You didn't say, 'Or I will sue,' but the law doesn't say you have to,” Judge Donato said. “FN had a reasonable apprehension of being sued.”
FN said in its May complaint that it filed to register the "Bella Union" mark in July of 2013. After the U.S. Patent and Trademark Office evaluated the application, it found no conflicting marks, including Union's “Union Wine Co.” mark, according to the complaint.
FN Cellars said it has used the mark extensively and continuously since August 2014. In June of that year, five months after the expiration of the opposition period, Union's trademark counsel sent a letter saying there was an “obvious likelihood of confusion” between the two company's marks, according to the complaint.
Union's letter said that if FN didn't abandon its plans to register Bella Union, FN would “proceed with a cancellation at its earliest possible juncture,” the suit said.
Union claimed in its motion to dismiss that the letter was only intended as a “professional courtesy,” although it acknowledged that it had threatened to seek cancellation of FN's mark.
“It wasn't a professional courtesy,” Judge Donato said Wednesday. “You were asking for something back.”
Union also argued in its motion to dismiss that the federal court doesn't have jurisdiction over the matter because it's no more than a “run-of-the-mill trademark cancellation action,” which belongs before the Trademark Trial and Appeal Board.
But Judge Donato disagreed, saying that would only be the case if Union had done no more than file a cancellation petition. The fact that it also sent a letter to FN hinting at legal action gave the court jurisdiction over the dispute, the judge said.
Judge Donato scheduled a trial in the dispute for Feb. 1, calling the case straightforward and saying he wants it resolved soon.
FN's attorney, Douglas Winthrop of Arnold & Porter LLP, agreed, saying FN is currently selling the Bella Union wines and needs to determine the likelihood of confusion issue quickly.
But Union's attorney, Paul Reidl of Law Office of Paul W. Reidl, disagreed, saying he doubts FN was in much of a hurry considering it issued a press release this week that said the Bella Union wines would launch in September. He asked for time to conduct a consumer survey, which he estimated would take at least two months.
FN Cellars is represented by Douglas A. Winthrop of Arnold & Porter LLP.
Union is represented by Paul W. Reidl of Law Office of Paul W. Reidl.
The case is FN Cellars, LLC v. Union Wine Company, case number 3:15-cv-02301, in the U.S. District Court for the Northern District of California.
--Editing by Christine Chun.
