The US District Court for the Central District of California issued a preliminary injunction requested by  a winery against a spirits producer in a trademark dispute.

Plaintiff White Oak Vineyards & Winery, LLC sought to prevent White Oak Spirits LLC from using the name “White Oak” in connection with the sale of  vodka.

Since 1982, the plaintiff has marketed and sold “ultra-premium” wines using the trademark “White Oak”. It applied to register the mark  in 2004, in International Class 033 for “wine” and registered as a trademark in 2006.

In 2011, White Oak filed a Declaration of Use and Incontestability with the U.S. Patent and Trademark Office, making the trademark registration “valid, subsisting, and incontestable” under US trademark law.

White Oak has sold millions of bottles of its wines throughout the US and abroad.

The Vodka

The defendant, a Florida company based in New York, was founded in 2013 and makes a product called “WHITE OAK PREMIUM VODKA.”

The defendant filed an application with the United States Trademark Office to register the trademark “WHITE OAK PREMIUM VODKA” in 2013 in International Class 033 for “Liquor.”

Registration was refused because of likelihood of confusion with the plaintiff’s mark. The examining attorney found:

The marks contain the same dominant wording and are highly similar in sound and overall commercial impression. The goods are highly related. The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.

The defendant attempted to enter into a “coexistence agreement” with the plaintiff, asserting that it had no intention of using the term “White Oak” for wine. The plaintiff refused and demanded that the defendant stop using the mark for vodka.  After sending another cease-and-desist letter, the Plaintiff  filed a complaint for damages and injunctive relief, claiming trademark infringement among other causes of action

In its March 9th decision, the court granted the plaintiff’s request for an injunction, applying the eight-factor test for trademark infringement used by  the Ninth Circuit.

Trademark Infringement Factors

These factors, set forth in the case of AMG Inc. v. Sleekcraft Boats, are:

  • the similarity of the marks
  • the proximity of the goods covered by the marks
  • the strength of the claimed mark
  • similarity of marketing or advertising channels
  • the degree of care likely to be exercised by the purchaser
  • actual confusion over the marks
  • the intent of defendants
  • likelihood of expansion of the product lines

The court considered these factors “holistically” and concluded that they justified granting a preliminary injunction.