15 September 2005

Colorado Wine Country Trademark Dispute

I really shouldn't disparage my former colleagues in Mesa County. I'm sure these attorneys mean well. But, a recent trademark dispute between Plum Creek Cellars and DeBeque Canyon Winery is a comedy of errors, which has, unfortunately, been turned into a federal case, literally.

Plum Creek, whose wines include Palisade Red, Palisade Rose and Palisade White, said DeBeque started selling a Cotes de Palisade wine this year.

Plum Creek's Palisade wines go for $9 to $12 a bottle. DeBeque's Cotes de Palisade sells for about $13 a bottle.

"We're concerned that our wines will be confused with their wines," said Plum Creek co-owner Sue Phillips. "Cotes de Palisade is a very high-priced wine, while our (Palisade wines) are moderately priced. One person came into our tasting room unhappy, thinking we raised our price. . . .

Plum Creek said it held a trademark on "Palisade" since 1998 but mistakenly let it lapse in March. It reapplied for the trademark April 26.

Three days later, DeBeque filed for a trademark on the word, Plum Creek said.

According to the complaint, Price worked for Plum Creek until the mid-1990s, when he left to create DeBeque in 1997.

Now, they are in federal court over the dispute.

The problem with both claims to the word "Palisade" to name the respective wines is that Palisade is a place name. It is an incorporated city in Mesa County which is home to most of Colorado's wine vineyards, including both parties to this suit.

While I am not an intellectual property specialist, I did have occasion to deal with the Patent and Trademark office to register trademarks and did handle an occasional trademark dispute when I was a full time practicing attorney. I'm surprised that Plum Creek was able to obtain a registration for their mark in the first place in 1998, and I'm equally surprised that DeBeque thinks that they can claim the trademark now.

The federal law governing trademarks, called the Lanham Act, bars marks that are "primarily" geographic. 15 United States Code Annotated Section 1052(e). Geographic marks are not allowed when the geographic significance of the term outweighs other senses of the term with regard to the particular product in the market in which it is sold. Thus, if the term "Palisade" was understood by the purchasers of these wines to refer primarily to a crude wooden fortress, the word could be used, but if customers understand that the term refers to a particular part of Colorado wine country, it isn't entitled to protection. If "the public would make a goods/place association, i.e., believe that the goods . . . originate in that place.", In re Societe Generale Des Eaux Minerales De Vittel (1987), then trademark protection is not permitted for either party.

A trademark may also not be simply descriptive. 15 United States Code Annotated Section 1052(e)(1). You can't get a trademark on words like "Liquor" for liquor, "Dry Cleaning" for dry cleaning, or "Fresh" for fresh foods.

How anyone ever won trademark protection for "Palisade Red", "Palisade Rose" and "Palisade White" to describe red, rose and white wines respectively made in Palisade, Colorado at the PTO is beyond my comprehension. I certainly never got a trademark examiner who was so asleep at the switch. Whenever I tried any stunt remotely like that, I got objection letters back from the PTO telling me that I was full of shit and asking me to change my application. Maybe the examiners were swayed by some free samples of the product included with the application.

"Cotes de Palisade" is no better. The non-literal translation from the French is roughly "Wine from the Palisade Region." Any potentially non-geographic sense of the word Palisade is banished in that phrase.

Finally, of course, DeBeque can't dispute that it is well aware of the actual and continuing prior use by Plum Creek of the mark in the same market. This should bar them from obtaining a new mark, even if it was actually something that could receive trademark protection.

The fact that the 1998 trademark registration lapsed should also eliminate any of the presumptions that come with continuous registration of a mark which might otherwise have muddied the issues.

Maybe there is some essential fact in this case that I'm missing here. But, if there isn't, Plum Creek should be denied an opportunity to renew their trademark, and any application by DeBeque to obtain a trademark of their own should likewise be denied. If the customers find the names confusing, maybe the wineries should come up with more creative names.

Note to French punctuation fiends: I tried to place the ^ symbol over the "o" in "Cotes", but when I hit the publish button, something else appeared, so I suppressed the mark in this post. I have taken similar liberties with the "e" in Rose, stripping it of its rightful accent mark.

Meanwhile, if your appetite for dumb trademark disputes has not been sated, you can investigate the case of Garrison Keillor who is going after an outfit selling the parody "Prairie Ho Companion" T-Shirts here and here. The fair use claim and claim of harassment made by the T-shirt vendor are again, pretty solid. Calling Keillor a "Liberal Comedian", may be overkill to some extent, however. Keillor's tales of wholesome small town America actually make him one of the more conservative comedians out there. But, the threat of a lawsuit in this case, like so many of this kinds of disputes, again shows bad judgment on the part of both Keillor and his attorney, Eric Nilsson, of Nilsson and Associates, P.A. in Minneapolis. Trademark law is designed to prevent knockoffs, not parodies. Also, a hat tip for Kos for pointing me to the story and for providing a link to this handy legal guide for bloggers from the Electronic Frontiers Foundation.

1 comment:

Anonymous said...

You know, I picked up a bottle of their 2001 Cabernet Sauvingon on an impulse buy the other night. To tell you the truth, I sort of missed the "1" in the $18.99 price tag. I was pleasantly surprised. That bottle rocked! I don't like the price but loved the wine.