Westside Windery v. Sans Liege - grasshopper wine trademark complaint.pdf

8/19/2019 Westside Windery v. Sans Liege - grasshopper wine trademark complaint.pdf

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Jon A. Birmingham (CA SBN 271034)

FITCH, EVEN, TABIN & FLANNERY LLP21700 Oxnard Street, Suite 1740

Los Angeles, California 91367

Telephone: (818) 715-7025

Facsimile: (818) 715-7033Email: [email protected]

Attorney for Plaintiffs

WESTSIDE WINERY LLC AND THACHER WINERY & VINEYARD, I NC. D/B/A THACHER

WINERY

UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

WESTSIDE WINERY LLC AND THACHER

WINERY & VINEYARD, I NC. D/B/A/

THACHER WINERY,

Plaintiffs,

v.

SANS LIEGE I NC., THE FABLEIST WINE

COMPANY, 22 HUNDRED CELLARS, I NC.

D/B/A FIELD R ECORDINGS WINERY, CURT

SCHALCHLIN, AND A NDREW JONES,

Defendants.

Civil Action No.

COMPLAINT FOR TRADEMARK AND TRADE

DRESS INFRINGEMENT AND UNFAIR

COMPETITION

DEMAND FOR JURY TRIAL

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 1 of 13 Page ID #:1


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COMPLAINT

Plaintiffs, Westside Winery LLC and Thacher Winery & Vineyard, Inc. d/b/

Thacher Winery (individually and collectively referred to herein as “Thacher Winery”)

bring this suit for trademark and trade dress infringement and federal, state and commonlaw unfair competition against Defendants, Sans Liege Inc., The Fableist Wine Company

22 Hundred Cellars, Inc. d/b/a Field Recordings Winery, Curt Schalchlin, and Andrew

Jones, and alleges as follows:

NATURE OF ACTION, JURISDICTION AND VENUE

1. This Court has original subject matter jurisdiction over this action pursuant to

28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121. This Court has original subjec

matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a) and 15

U.S.C. § 1121.

2.

This is a complaint for trademark and trade dress infringement and unfai

competition arising under Section 43(a) of the Lanham Act, 15 U.S.C. §§ 1114 an

l125(a) regarding use of Defendants’ mark for wine products and services, which i

identical, indistinguishable or highly similar and confusingly similar to Thacher Winery’

common law Grasshopper marks used in connection with wine products and services and

federally registered Grasshopper marks for wines.

3.

This Court has supplemental jurisdiction over the state law claims pursuan

to 28 U.S.C. §§ 1338(b) and 1367(a) as all claims herein form part of the same case o

controversy.

4.

This Court has personal jurisdiction over Defendants because, among othethings, Defendants conduct and solicit business in this jurisdiction and, on information

and belief, are residents in this jurisdiction and/or have committed at least some of the

conduct discussed herein in this district.



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5. Venue is proper in this district under 28 U.S.C. § 1391(b) as Defendants are

resident in this district and a substantial part of the events giving rise the claims herein

occurred in this district.

PARTIES

6.

Westside Winery LLC, which has done business as Thacher Winery, is

California Limited Liability Company having a principal place of business at 835

Vineyard Drive, Paso Robles, California 93446. Westside Winery LLC is the owner o

premises and assets used in vineyard agriculture and wine production, including but no

limited to trademarks, trade identity, and trade dress asserted in this complaint.

7. Thacher Winery & Vineyard, Inc. d/b/a Thacher Winery is a California

corporation having a principal place of business at 8355 Vineyard Drive, Paso Robles

California 93446. Thacher Winery & Vineyard, Inc. d/b/a Thacher Winery is in th

business of vineyard agriculture and wine production with sales and distribution o

produced wine and related products and services, all as the authorized user of trademarks

trade identity, and trade dress asserted in this complaint.

8.

On information and belief, Sans Liege Inc. is a California corporation having

a place of business at 870 Price St., Pismo Beach, California 93449. On information an

belief, Sans Liege Inc. is in the business of wine production with sales and distribution o

produced wine. On information and belief, Sans Liege Inc.’s wine products and service

are sold in competition with Thacher Winery’s products and services.

9. On information and belief, Curt Schalchlin is an individual residing and

doing business in the State of California, having a principal place of business at 870 PricSt., Pismo Beach, California 93449. On information and belief, Curt Schalchlin is in th

business of wine production with sales and distribution of produced wine. On informatio

and belief, Curt Schalchlin’s wine products and services are sold in competition with

Thacher Winery’s products and services.



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10. On information and belief, The Fableist Wine Company, formerly named

Cane & Fable Wines, Inc., is a California corporation having a place of business at 460

Marquita Ave., Paso Robles, California 93446 and an agent for service at 100 Wes

Broadway, Suite 100, Glendale, California 91210. On information and belief, ThFableist Wine Company is in the business of wine production with sales and distribution

of produced wine. On information and belief, The Fableist Wine Company’s win

products and services are sold in competition with Thacher Winery’s products an

services.

11. On information and belief, Andrew Jones is an individual residing and doin

business in the State of California, having a place of business at 460 Marquita Ave., Paso

Robles, California 93446. On information and belief, Andrew Jones is in the business o

wine production with sales and distribution of produced wine. On information and belief

Andrew Jones’ wine products and services are sold in competition with Thacher Winery’

products and services.

12. On information and belief, 22 Hundred Cellars, Inc. d/b/a Field Recording

Winery is a California corporation having a place of business at 460 Marquita Ave., Paso

Robles, California 93446. On information and belief, 22 Hundred Cellars, Inc. is in th

business of vineyard agriculture and wine production with sales and distribution o

produced wine. On information and belief, the wine products and services of 22 Hundre

Cellars, Inc. d/b/a Field Recordings Winery are sold in competition with Thache

Winery’s products and services.

FACTS COMMON TO ALL COUNTS 13. Thacher Winery was founded in 2004 in Paso Robles, California.

14. Thacher Winery began vineyard agriculture operations and producing wine

at least as early as 2004 in connection with a Grasshopper mark for its business, trade

identity, trade dress, packaging and product labeling, and in marketing and othe

promotional information and materials.



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15. The image of the grasshopper is associated with the name “Thacher” and i

part of the traditional Thacher family crest.

16. From the time that Thacher Winery began vineyard agriculture operation

and producing wines, the wine industry and the wine consuming public have knownThacher Winery to use the distinctive, non-functional image of a grasshopper as trad

dress on its wine label and elsewhere, such that Thacher Winery has come to be known a

“the Winery with the Grasshopper label” and “the Wine with the Grasshopper label,” o

the like.

17. Based on Thacher Winery’s extensive and exclusive use of its Grasshoppe

mark and filing of Application No. 78850669 on March 30, 2006 for its THACHER

WINERY and Grasshopper mark on wine labelling with use in commerce at least as early

as November 1, 2006, the United States Patent and Trademark Office on October 21, 200

issued to Thacher Winery Registration No. 3522613 for the mark:

specifying “Wine.” A photocopy of this referenced Registration is attached as Exhibit A.

18.

The specimen of use from the file history of Registration No. 3522613

below, presents the typical trade dress for how Thacher Winery has used and continues to

use the Grasshopper mark on bottle labels:



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19. Beginning with certain 2011 and 2012 vintages of wine, Thacher Winery

introduced an updated Grasshopper mark on wine labelling and elsewhere beginning a

least as early as June 22, 2013, and based on Thacher Winery’s extensive and exclusive

use in commerce of its updated Grasshopper mark and filing of Application No. 8623825on April 1, 2014, the United States Patent and Trademark Office on October 28, 2014

issued to Thacher Winery Registration No. 4628609 for the mark:

specifying “Wine.” A photocopy of this referenced Registration is attached as Exhibit B.

20.

The specimen of use from the file history of Registration No. 4628609

below, presents the typical trade dress for how Thacher Winery has used and continues to

use the updated Grasshopper mark on bottle labels:

21. Thacher Winery has actively and consistently promoted its Grasshoppe

marks in connection with branded products and services in the United States through sale

of wine products and related souvenirs and merchandise, through operating wine tastin

onsite and at public events, through advertising, publicity and social media, and through

offering and hosting onsite wedding and corporate events. Through its efforts, the Thache



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Winery has established and is further establishing, substantial goodwill and valuabl

trademark rights in the Grasshopper mark.

22. Based on Thacher Winery’s longstanding use of the Grasshopper marks fo

wine products and services and ownership of Registration Nos. 3522613 and 4628609 fowine (the marks, the trade dress and the common law rights and statutory rights in th

marks are herein comprehensively referred as the “Grasshopper marks”), the relevan

public trading in or purchasing such goods and services, have long ago come to recogniz

the “Grasshopper” term, grasshopper image and trade dress as being exclusive source

identifiers for Thacher Winery goods and services.

23. The Defendants Sans Liege Inc., The Fableist Wine Company, 22 Hundred

Cellars, Inc. d/b/a Field Recordings Winery, Curt Schalchlin, and Andrew Jones all reside

and operate their wine related businesses in and around Paso Robles, the same city in

California where Thacher Winery established and operates its winery and related

business.

24. Long after Thacher Winery established U.S. rights in the Grasshopper mark

by use and registration, the Defendants Sans Liege Inc., The Fableist Wine Company, 22

Hundred Cellars, Inc., Curt Schalchlin, and Andrew Jones collaborated in the production

sale and distribution of wine having the image of a grasshopper as a source identifying

mark (the trade dress and mark are herein comprehensively referred as “Defendants

mark”) prominently displayed on labelling, as displayed below:

25.

On information and belief, the Defendants first sold 2013 vintage wine

having the Defendants’ mark on labelling on or about September 2014.



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26. On information and belief, since the time that Defendants began using th

Defendants’ mark for wine, the Defendants have promoted the wine in close connection

with the term “Grasshopper” and the image of a grasshopper on wine labels and

elsewhere.27.

The Defendants had prior actual knowledge or had reason to know of the

Grasshopper marks belonging to Thacher Winery.

28.

The Defendants have not received consent from Thacher Winery to sell win

with the Defendants’ mark.

29. The Defendants’ mark is indistinguishable from and highly similar to th

Thacher Winery’s Grasshopper marks.

30.

The Defendants have used and are using the Defendants’ mark to sell wine

products in the same markets and channels, including but not limited to the same retai

outlets, in which Thacher Winery sells products and services and to sell to the sam

customers to whom Thacher Winery is selling or attempting to sell.

31. On information and belief, the Defendants have had at all relevant time

specific knowledge of the Grasshopper marks belonging to Thacher Winery and despit

this specific knowledge, the Defendants introduced wine products and continue to

promote, sell and distribute wine products in connection with the Defendants’ mark in th

same markets and channels in which Thacher Winery sells products and services and to

sell to the same customers to whom the Plaintiffs are selling or attempting to sell.

32.

The Defendants’ infringement of the Grasshopper marks and trade dress ha

caused consumers to mistake the Defendants’ mark as identifying wine originating from

or affiliated with Thacher Winery.33. Defendants’ infringement of the Grasshopper marks is causing actua

confusion in the marketplace, and will continue to cause actual and likely confusion in th

marketplace, regarding the source, origin and/or affiliation of the Defendants’ product

with the products and services of Thacher Winery.



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34. Thacher Winery notified the Defendants that their infringement of th

Grasshopper marks is causing actual and likely confusion with the Thacher Winery

Grasshopper mark and causing irreparable damage to Thacher Winery.

35.

Despite actual notice and reasonable time to cease infringement, theDefendants have continued use of the infringing Defendants’ mark.

36.

All the foregoing acts of the Defendants have caused damage to Thache

Winery, and unless restrained by this Court, will continue to cause, serious and irreparabl

injury, including, but not limited to, loss of competitive advantage, loss of busines

reputation and goodwill, loss of sales and profits, and other losses, for which Thache

Winery has no adequate remedy at law.

COUNT I

INFRINGEMENT UNDER LANHAM ACT

37.

Thacher Winery incorporates by reference herein paragraph nos. 1-36.

38. Without consent of Thacher Winery, each of the Defendants have used, in

connection with the sale, offering for sale, distribution or advertising of the infringing

products, a mark that infringes upon the registered marks of Thacher Winery.

39. On information and belief, these acts of infringement have been committed

with the intent to cause confusion, mistake or deception, and are in violation of 15 U.S.C

§ 1114.

40.

The foregoing acts of the Defendants constitute willful infringement o

registered marks in violation of the Lanham Act, 15 U.S.C. § 1114.

41.

As a direct and proximate result of the infringing activities of each and all othe Defendants, Thacher Winery has suffered substantial damage.



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COUNT II

FALSE DESIGNATION OF ORIGIN UNDER LANHAM ACT

42. Thacher Winery incorporates by reference herein paragraph nos. 1-41.

43.

The conduct of each and all Defendants constitutes the use of words, termssymbols or devices to falsely describe the infringing products, within the meaning of 1

U.S.C. § 1125(a)(1). The Defendants’ conduct has caused and is likely to caus

confusion, mistake, or deception by or in the public as to the affiliation, connection

association, origin, sponsorship or approval of the infringing products to the detriment o

each and both of the Plaintiffs and in violation of 15 U.S.C. § 1125(a)(1).

44. The foregoing acts of the Defendants constitute willful false designation o

origin and violation of the Lanham Act, 15 U.S.C. § 1125(a).

45.

As a direct and proximate result of the infringing activities of each and all o

the Defendants, Thacher Winery has suffered substantial damage.

COUNT III

COMMON LAW UNFAIR COMPETITION

46.

Thacher Winery incorporates by reference herein paragraph nos. 1-45.

47. Without consent of Thacher Winery, each and all of the Defendants hav

used, in connection with the sale, offering for sale, distribution or advertising of the

infringing products, marks and trade dress that infringe upon marks and trade dres

belonging to and used by Thacher Winery.

48. The foregoing acts of the Defendants constitute willful trademark

infringement and unfair competition in violation of the common law of California and/oother States.



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COUNT IV

CALIFORNIA BUSINESS & PROFESSIONS CODE

49. Thacher Winery incorporates by reference herein paragraph nos. 1-48.

50.

On information and belief, each and all of the Defendants in the course otheir business caused and are causing likelihood of confusion and misunderstanding as to

the source of Defendants’ goods and services.

51.

The foregoing acts of the Defendants constitute willful trademark and trad

dress infringement and unfair competition in violation of the California Business and

Professions Code Section 17200 et seq.

PRAYER FOR RELIEF

WHEREFORE, Thacher Winery prays for the following relief:

1)

A preliminary injunction ordering that each of the Defendants, and any of it

principals, officers, directors, shareholders, owners, affiliates and subsidiaries, and al

others acting in concert or participation with the Defendants, shall not use, directly o

indirectly, the Defendants’ mark, or any other mark that is confusingly similar to th

Grasshopper marks;

2) A permanent injunction ordering that each of the Defendants, and any of it

principals, officers, directors, shareholders, owners, affiliates and subsidiaries, and al

others acting in concert or participation with the Defendants, shall not use, directly o

indirectly, the Defendants’ mark, or any other mark that is confusingly similar to th

Grasshopper marks;

3)

An award of damages, including prejudgment interest, sustained by ThacheWinery as a result of the wrongful acts of the Defendants;

4) An increase and/or trebling of damages pursuant to 15 U.S.C. § 1117, or any

other applicable statutory or common law basis;

5)

An accounting of any and all profits derived from the wrongful acts of th

Defendants;



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6) An award of costs and attorney's fees pursuant to 15 U.S.C. § 1117 or any

other statutory or common law basis; and

7) Such other and further relief as the Court may deem just and proper.

Respectfully submitted,

Westside Winery LLC and Thacher Winery &

Vineyard, Inc. d/b/a Thacher Winery

Date: March 22, 2016 /s/ Jon A. Birmingham

Jon A. Birmingham

FITCH, EVEN, TABIN & FLANNERY

21700 Oxnard Street, Suite 1740Los Angeles, CA 91367

Telephone: (818) 715-7025

Facsimile: (818) 715-7033


731342



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DEMAND FOR JURY TRIAL

Plaintiffs hereby request a jury trial on all issues raised in this complaint.

Respectfully submitted,

Westside Winery LLC and Thacher Winery &

Vineyard, Inc. d/b/a Thacher Winery

Date: March 22, 2016 /s/ Jon A. Birmingham

Jon A. Birmingham

FITCH, EVEN, TABIN & FLANNERY

21700 Oxnard Street, Suite 1740Los Angeles, CA 91367

Telephone: (818) 715-7025

Facsimile: (818) 715-7033



Westside Windery v. Sans Liege - grasshopper wine trademark complaint.pdf

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Transcript of Westside Windery v. Sans Liege - grasshopper wine trademark complaint.pdf