We have previously blogged about the drawbacks that can come from using one’s surname as a trademark, and now a recently filed suit in federal court provides a fresh case study in how things can go wrong when two families, unrelated but with the same name, on opposite sides of the country, both decide to start making wine. When a complaint is captioned Blair Vineyards LLC v. Blair Vineyards LLC, it’s not too difficult to figure out what the issue is, but digging into the facts yields some interesting wrinkles.
Blair Vineyards LLC is a California winemaker, a family-run vineyard in Monterrey County, California, specializing in Pinot Noir grown in the Arroyo Seco region and bottled under the registered trademark BLAIR ESTATES. According to their web site, Jeffrey Blair first planted Pinot Noir vines on his family’s ranch in 2007, and the complaint alleges that since then the family has developed award-winning “ultra-premium” wines with sales in the hundreds of thousands of dollars.
Blair Vineyards LLC is a Pennsylvania winemaker, a family-run vineyard in Berks County, Pennsylvania, offering several varieties of wine including Pinot Noir, bottled under the BLAIR trademark. According to their web site, Richard Blair first planted his Chardonnay, Pinot Noir and Pinot Gris vines on his family farm in 1998. The family opened their winery in 2004, and subsequently acquired more land in 2007; they now sell over a dozen white, red, and semi-sweet wines.
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The case presents some interesting questions on the issues of priority as well as surnames.
Based on the chronologies found on the parties’ respective web sites, one might ask how the California Blairs can claim to be the senior rights-holder, since the Pennsylvania Blairs appear to have started making wine at least three years earlier? The answer is in their federal trademark registration for BLAIR ESTATE, which was issued in 2006 and claims a first use date of 2001. According to the complaint, the California Blairs acquired this trademark from the widow of the original owner (a Napa Valley winemaker) in 2012, and thereby gained the benefit of the earlier priority dates.
The original owner of the registration was a man named Johnson, which is perhaps why the surname issue did not arise in the examination of the BLAIR ESTATE application. But the Pennsylvania Blairs cannot use the surname issue to challenge the validity of the registration, because it now enjoys incontestable status under Section 15 of the Trademark Act.
Thus, it seems to be an amazing stroke of luck that the California Blairs were able to acquire a trademark that (a) corresponded to their own name; and (b) now enables them to leapfrog over the Pennsylvania Blairs – who could end up being shut out despite having been the first Blairs in the wine business. The case could provide a stark lesson in the importance of securing (either by registration or acquisition) federal trademark registrations early, even when the mark is your own name.