California winery White Oak Vineyard & Winery filed an infringement suit in California federal court against Florida vodka distiller White Oak Spirits.  On White Oak Vineyard’s motion for a preliminary injunction, the court issued a tentative ruling granting the injunction on the basis consumers would likely confuse “White Oak” vodka and “White Oak” wine.  The court noted that wine and vodka are distinct products, but that when sold under identical names, the goods are sufficiently related for there to be a likelihood of confusion.  The court further noted that the Ninth Circuit has not recognized a distinction between wine and spirits in trademark cases.  The Court was not influenced by White Oak Spirits’ argument that consumers would only think wine and vodka sold under the same mark are related if the earlier rights holder’s mark was well-known, such as “Robert Mondavi.”  The Court rejected that argument, commenting that the White Oaks Winery is an established commercial enterprise and thus, some consumers must know of it.  

At the end of March, the parties filed papers with the court stating that White Oak Vineyard will drop the infringement lawsuit in return for White Oak Spirits immediately and permanently ceasing use of the WHITE OAK brand name.  

White Oak Vineyards & Winery v. White Oak Spirits, LLC, Case No. 2:14-cv-09830 (C.D. Cal. Mar. 9, 2015)