US district court reverses decision in winery trademark suit

US District Court Judge Gordon J Quist has reversed the ruling he issued in Leelanau Wine Cellars v Black & Red Inc (Case 01-CV-319, WD Mich 2002), in which he found Black & Red (known as Chateau de Leelanau) guilty of trademark infringement for its use of the word 'Leelanau' on its wine bottle labels. In his revised decision, Quist placed the burden on the trademark holder - Leelanau Wine Cellars - to prove that there was a likelihood of confusion between the two companies' marks. As Leelanau Wine Cellars failed in this task, the decision was reversed.

Leelanau Wine Cellars obtained a US trademark registration for the LEELANAU mark in 1987, but 'Leelanau' is also the name of the county in the state of Michigan in which Chateau de Leelanau is located, the name of the lake on which the winery sits, and the appellation of origin for the region. Chateau de Leelanau argued that since 'Leelanau' describes the region where both wineries are located, wineries cannot be barred from using the word to describe where the grapes for their wine originated.

In his initial decision, Quist determined that Leelanau Wine Cellars' registration of the LEELANAU mark was valid. He issued an injunction against Chateau de Leelanau, ordering that it change its name, remove the mark from all labels and merchandise, and pay damages and attorneys fees to Leelanau Wine Cellars.

A few months later, Quist changed his mind and stated that unless Leelanau Wine Cellars could prove its customers were likely to confuse the two companies' marks, he would reverse the decision. He then added: "After the bench trial [...], I thoroughly reviewed the facts and law on this case. I now tend to believe the plaintiff has not demonstrated a likelihood of confusion between the two marks."

The ruling is of interest because, in his re-evaluated decision, the judge placed the burden on the holder of the trademark to prove confusion. It will also allow other wineries within the Leelanau region to use the name to accurately describe the origin of their grapes.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP, Washington DC

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