Naked Wines LLC has filed an action against, Inc. and Groupon, Inc. alleging that they have infringed its “family of erotically-themed marks” including NAKED WINERY®, NAKED WINERY VIXEN®, NAKED WINERY NAUGHTY®, and NAKED WINERY DIVA®. Naked Wines LLC v. Nakedwines. com, Inc., No. 3:12-cv-01717 (U.S. Dist. Ct., D. Or., filed September 21, 2012). According to the complaint, Oregon-based Naked Wines has used the marks since 2005 and has “developed and maintains customers throughout the United States.” The marks have purportedly “become an asset of substantial value as a symbol of Plaintiff and its products.”, located in Napa, California, is allegedly “the U.S. arm of a UK-based, online company that sells and distributes wine from multiple producers.” According to the plaintiff, defendant, which is working with various producers to sell 400,000 cases of wine in the United States in 2013 and planning to open a winery in California under the name “Naked Wines Winery & Tasting Lounge” in October 2012, applied to the U.S. Patent and Trademark Office (USPTO) to register “NAKED WINES” for “alcoholic beverages (except beers).” The registration was allegedly refused due in part to a likelihood of confusion with the plaintiff’s Naked marks. USPTO deemed the application abandoned in August 2012.

Groupon, which hosts online “daily deals,” allegedly posted a deal for the defendant on August 7 titled “Naked Wines – Online Deal,” offering wine for a discount price. According to the plaintiff, a number of individuals contacted Naked Wines on that date “incorrectly believing that the Infringing Groupon was an offering from Plaintiff rather than from Defendant” The plaintiff claims to have notified Groupon on August 7 that it had not authorized the use of its mark, reporting the confusion resulting from the “Infringing Groupon” and demanding that it be removed from Groupon’s Website. The plaintiff also demanded that Groupon “take steps to ensure that any sales made under [the infringing Groupon] are not consummated, as allowing this action will contribute to trademark infringement and unfair competition.”

While Groupon purportedly acknowledged the letter, it did not remove the Groupon from its Website, and when it expired on August 9, more than 410 infringing Groupons had allegedly been purchased. Thereafter, “additional Groupons for Defendant have been posted on, distributed through, or otherwise made available to the consuming public on Defendant Groupon’s” Website targeted to consumers in the Portland, New Orleans, Miami, Los Angeles, and Detroit markets.

The plaintiff alleges federal trademark infringement, false designation of origin and unfair competition under the Lanham Act, as well as unlawful trade practices under Oregon law against, and contributory trademark infringement under statutory and common law against Groupon. It seeks declaratory and injunctive relief; the destruction of infringing materials; actual, treble and punitive damages; interest; costs; and attorney’s fees.