Caymus Vineyard Sues Caymus Builders Because It Built Some Buildings For Its Wine Business
from the not-how-it-works dept
Look, trademark law can be confusing. If you're not spending some significant portion of your life either practicing trademark law or writing about trademark law, you might misunderstand how it works. In particular, the requirement for entities to be in the same business or market often times trips people up, with them either not realizing that this provision exists for there to be trademark infringement in most cases, or else not understanding exactly what it means to be competing in the same marketplace.
But my understanding and generosity in this is heavily strained when a winery sues a construction company just because the winery built stuff on its property.
According to a filing in San Francisco’s U.S. District Court, dated March 2, Sonoma’s Caymus Capital is being sued, along with other related parties, by Caymus Vineyards of Napa.
The suit cites the defendants’ “unauthorized and unlawful use of Plaintiff’s famous, incontestable federal trademark registration for the mark ‘Caymus’ and Plaintiff’s corporate and trade name ‘Caymus Vineyards.’”
By way of background, Caymus Capital is related to Caymus Builders, Caymus Residential Recovery, and other related businesses, all of which are also named in Caymus Vinedyards' lawsuit. To be clear, none of these companies are in the wine business. All of them are in the building and construction business. Readers of this site will already be scratching their heads wondering what argument the winery might be making in order to assert that any of this is trademark infringement.
Well, there are two arguments in the lawsuit, both of which are equally flimsy. First, as part of its wine business, Caymus Vineyards asserts in its filing that it builds stuff.
The suit explains that Caymus Vineyards has engaged in building projects on its own properties, primarily in the Napa Valley, and is currently developing a winery, bottling and distribution complex in Solano, where it does business as Caymus-Suisun.
None of which makes it a builder or construction company in the commercial marketplace. Were this to equate to trademark infringement, construction companies would likely have to go unnamed entirely, because every industry has to build stuff to be an industry.
In the complaint itself, Caymus Vineyards also complains that Caymus Builders, which is located in nearby Sonoma, tried to help with the recovery efforts from last year's devastating wildfires that rocked Wine Country.
Since that time, Defendant Caymus Builders LLC has advertised its services along the Napa-Sonoma corridor, presumably as part of the re-building process. … The highly visible signage advertising Defendant’s goods and services alongside vineyard properties will likely cause confusion, mistake, or deception as to the source, affiliation, sponsorship or authenticity of Defendant’s goods and services.
Say it with me now: none of this makes Caymus Vineyard a builder, nor does it make Caymus Builders a winery. All of this complaining is silly, as are claims that anyone is going to confuse the quite famous Caymus Vineyards winery with a construction company.
Hopefully the court will see clear to putting the cork back in this disaster of a trademark suit.
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Filed Under: competition, construction, different industries, trademark, use in commerce, wine
Companies: caymus builders, caymus vineyard
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More lawyers looking for billable hours, or what?
I tried looking up the trademark application, but the USPTO database returned some information, but not which market segments they are registered for. Maybe someone with more experience with that monstrosity can find it.
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Re: More lawyers looking for billable hours, or what?
I looked up "Caymus" (no vineyard). And they only have a mark for wine. That's all, which means they probably don't have a leg to stand on outside of any product other than wine. Obviously their lawyer should have told them their mark doesn't cover anything but the product its registered for. Apparently either they didn't do so, doesn't know much about trademark law, or the client insisted.
To find out what products a mark is registered for click on the "TSDR" button on the upper left and it'll give the details on the actual registration. You then go to goods and services and it'll do a drop down for what it's meant to protect.
I also looked up Caymus for the holding company and both of those marks, "Caymus Homes" and "Caymus Real Estate LLC" are abandoned, which means they are no longer be protected under TM law, I think.
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Re: More lawyers looking for billable hours, or what?
Seems pretty straightforward.
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The opposite day at the Caymus Vineyard
...
I see no downsides here!
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Re: The opposite day at the Caymus Vineyard
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Re:
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Re: Re:
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Uniqueness?
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Re: Uniqueness?
I believe the response is this: What is it about the ability to bottle nicely-balanced Pinot Noir that would make you say, "Now that's the kind of construction company I need to build my new garage." Customer confusion, the ultimate arbiter, generally requires both entities to play in the same space.
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Re: Uniqueness?
Not enough to carry all of the weight. There is a laundry list of factors that go into whether there is confusion: 1) Strength of the mark on the scale of generic to arbitrary/fanciful; 2) Relatedness of products; 3) Similarity of marks; 4) Evidence of actual confusion; 5) Similarity of marketing channels used; 6) Care of consumers in distinguishing between them; 7) Intent of the defendant in selecting the similar mark; and 8) Likelihood of expansion of businesses to cause confusion in the future.
You’re basically saying a win on factors 1 & 3 should inherently produce a win on 6, and a win overall even if the defendant wins on factors 2, 4 & 8 and 5 & 7 are neutral.
Or you’re saying that trademark dilution (eg why you can’t make COCA-COLA brand foot fungus ointment, even though there is no infringement) should exist in the absence of fame, and dilution is already bad enough, so your proposal would really make things nuts.
Trademark is a strongly use-it-or-lose-it field, and if the winery doesn’t do construction under the same mark (there’s nothing that says good wine like ‘we also erect buildings and other structures’) then it’s not using the mark in that capacity and gets no rights.
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Smells like...
I guess we'll see...
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Misunderstanding
Look, trademark law can be confusing. If you're not spending some significant portion of your life either practicing trademark law or writing about trademark law, you might misunderstand how it works.
No actually you only need to remember one thing. The purpose of Trademark law is to protect the consumer not the Trademark holder.
Everything else follows from that.
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Caymus is a historical name in the area.
https://en.wikipedia.org/wiki/Caymus,_California
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Ah, Caymus, We'll Miss You
Caymus makes a wonderful Cabernet Sauvignon. I'll now have forego that vintage and cry in my Silver Oak, since googling "silver oak trademark disputes" returns tons of results with "trademark disputes" elided.
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Infringement can cross international classes, however
Yes, but it is broader sometimes than it appears. I had a case recently where an applicafion for a bar in one international class had to be abandoned because it conflicted with a prior mark for a brand of wine in a separate class. The examiner felt that people might think the wine was the bar’s house label, but in fact there was no relationship.
I feel it could be beaten with adequate and expensive survey evidence, but the client didn’t want to wait years and pay big bucks to get to the Federal Circuit which would be the first real opportunity for success in challenging the refusal.
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Tim's got Dad jokes.
yeah, I chuckled a little.
You would think a responsible lawyer... oh never mind. I would have just charged the consult fee and sent the Whinery on their way.
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Market overlap/confusion
Caymus Vinyard is building themselves a bad reputation. Hence the confusion with other construction businesses.
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https://en.wikipedia.org/wiki/Rancho_Caymus
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Re: a group of Indians?
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