The agreement resolves a preemptive suit launched by California-based FN Cellars LLC against Oregon-based Union Wine Co. in May. The suit said Union had threatened a legal challenge over the similar brand names.
The settlement papers – the two sides filed a joint stipulation of dismissal on Tuesday – did not include any terms of the deal, other than to say that both sides had agreed to pay their own legal costs. An attorney for Union Wine declined to comment on the terms of the deal, citing a confidentiality provision; an attorney for FNC did not immediately respond to an inquiry.
The fight between the two companies started in June 2014, when Union Wine's attorneys sent a letter warning FNC that “Bella Union” was confusingly similar to the “Union Wine Co.” name – a threat made more than five months after FNC's application to register the name had cleared its opposition window. When FNC responded that it didn't believe it was infringing anything, Union Wine filed a cancellation proceeding against the “Bella Union” registration at the Trademark Trial and Appeal Board.
That was the final straw for FNC: In May, the company filed a federal court complaint seeking both a declaratory judgment of noninfringement and a cancellation of Union Wine's registration.
“There can be no likelihood of consumer confusion ... as the commercial impression of the marks … is completely dissimilar,” the suit said. "It should therefore come as no surprise that [Union Wine] has never identified a single instance of actual confusion, and FN Cellars is unaware of any such instances of confusion.”
In asking the court to cancel the company's trademark registration, FNC said Union Wine's applications showed the company merely using the mark as a trade or company name, not as a full-fledged trademark.
“The specimen [Union Wine] submitted to the [United States Patent and Trademark Office] ... shows the term 'Union Wine Co.' being used on the back label for 'Kings Ridge Pinot Noir' brand wine, merely to identify UWC as the business entity which produced and bottled the wine,” the complaint said.
Union Wine moved to toss the case in July, saying it hadn't sufficiently threatened FNC to warrant a lawsuit, but U.S. District Judge James Donato denied the motion in August.
“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 Cellars is represented by Douglas A. Winthrop of Arnold & Porter LLP.
Union Wine 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 Bruce Goldman.
