GOATS ready to roam in the United States

Fairview Winery of South Africa and Bully Hill Vineyards Inc of New York have settled their dispute over the application by Fairview to register the word, and word and device marks GOATS DO ROAM for wine, which Bully Hill had opposed.

Fairview markets some of its wines under the mark GOATS DO ROAM. According to Fairview, the mark reflects what Fairview's herd of 600 goats do for exercise - walk up and down a goat tower. In late spring 2000 Fairview filed two applications to register the mark GOATS DO ROAM for wine in the United States. One application was for the word mark GOATS DO ROAM, and the other covered GOATS DO ROAM with a goat design. In the applications, Fairview claimed that it had used both marks in the United States since 1998.

Bully Hill filed oppositions against the GOATS DO ROAM applications, alleging priority and likelihood of confusion with its US registrations for the marks LOVE MY GOAT, LE GOAT and BULLY HILL BILLY GOAT, all for wine (Oppositions 91/123,560 and 91/152,148). The parties engaged in motion practice before the Trademark Trial and Appeal Board (TTAB) before agreeing to suspend the proceedings pending settlement negotiations. In February 2004 the parties signed and filed a stipulation to dismiss the notice of opposition without prejudice. The TTAB entered the stipulation and dismissed the proceedings without prejudice in May 2004. The two applications should now proceed to registration.

However, Fairview's US trademark problems are not over. At the same time Fairview applied to register its GOATS DO ROAM marks, it also applied to register GOAT-ROTI for wine. That application was approved and published by the Trademark Office, but the Institut National des Appellations d'Origine, the organization in charge of recognizing French appellations of origin and protecting such appellations from misuse, opposed the GOAT-ROTI application on the grounds that the mark resembles the well-known French appellation of origin CÔTE RÔTIE for wine. That opposition has been suspended for six months pending the outcome of settlement discussions between the parties.

Interestingly, the GOATS DO ROAM mark is already registered in the United Kingdom, as is the GOAT-ROTI mark with other words and a design for a label. Neither of those applications encountered objections from third parties.

Leigh Ann Lindquist, Sughrue Mion PLLC, Washington DC

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