Tassel Ridge Winery, LLC v. WoodMill Winery Inc., No. 5:11–cv–00066–RLV–DSC, 2013 WL 5567505 (W.D.N.C. Oct. 9, 2013).

In a trademark infringement action between two wineries, a North Carolina district court rejected the defendant winery’s counterclaims for infringement, holding that the defendant’s prior use argument failed due to the illegality of the prior use.

Here, the plaintiff winery alleged that the defendant’s RED, WHITE, AND BLUE mark for the defendant’s grape and blueberry wine infringed upon the plaintiff’s RED, WHITE, & BLUE registered mark for the plaintiff’s Concord grape wine. The plaintiff started selling their wine sometime after July 5, 2006 and successfully registered their mark for use with wine and spirits on the Principal Register with the U.S. Patent and Trademark Office on June 17, 2008. The defendant first sold their wine under their RED, WHITE, AND BLUE mark on July 3, 2006, at least two days before the plaintiff first sold their Red, White, & Blue wine. The defendant consequently argued that their mark was the senior mark and that the plaintiff’s mark was infringing.

However, the Federal Alcohol Administration Act put a cork in the defendant’s argument. This federal statute requires a party to get approval for their wine label and bottle before a wine may be bottled or sold. The plaintiff received approval for their label in July of 2006, while the defendant received approval for their label later in October of 2006. Thus, even though the defendant began selling their wine first, they did not legally begin selling their wine until after the plaintiff first legally sold theirs.

Given this twist in priority, the court determined that the plaintiff’s registered mark was technically the senior (or rather, more aged) mark. Though the issue of whether the defendant is liable for trademark infringement has not been resolved at this stage, this pre-trial decision surely left the defendant with much to whine about.