Court keeps Bogle Vineyards’ claim of trademark confusion against Next Wine alive despite Bogle’s arguing “no confusion” in the trademark office proceedings.

by Ashley Brandt · December 20, 2018

It’s called “prosecution history estoppel,” it’s a patent doctrine, not a trademark doctrine. And a court just correctly refused to apply it in a federal court case involving a trademark dispute between Bogle Vineyards and Next Wine LLC allowing Bogle to continue to prosecute a counterclaim against Next Wine over Next Wine’s registration of different “ESSENTIAL” marks for wine based on Bogle’s use of “ESSENTIAL RED” on bottles of wine.

Here’s a picture of two of the wines at issue in this trademark dispute side-by-side cribbed from the complaint that Next Wine filed:

Two of the Wines at issues in this Trademark Dispute

Here’s the background of the dispute over the ESSENTIAL marks between these two winemakers taken from Bogle’s version of the facts as told in the district court’s opinion:

Bogle’s counterclaims allege the following. Bogle is a family-owned business that has been growing grapes in the Clarksburg, California area since 1968. In April 2012, Bogle began selling a premium red blend table wine under the trademark ESSENTIAL RED. While Bogle’s main label features the Bogle trademark and logo, consumers differentiate between various Bogle wines by the secondary ESSENTIAL RED trademark. Consumers who are looking for a red blend will purchase ESSENTIAL RED based on the trademark on the label.

Since 2012, Bogle has sold over 14 million bottles of ESSENTIAL RED wine, which is distributed in all fifty states and is sold at the winery, in wine shops, in restaurants, over the internet, in other licensed retail outlets, and at chain retailers such as Total Wines, Costco, Safeway, Kroger, and Whole Foods. Through extensive promotional and sales efforts, Bogle has developed an extensive amount of goodwill in the ESSENTIAL RED brand and it has become an extremely valuable asset to Bogle.

Next Wine is a “virtual winery” that contracts with third parties to make and distribute wine bearing its trademarks. In 2012, Next Wine developed a brand name for a wine, MY ESSENTIAL, to use on a California red blend wine. On information and belief, Next Wine sells its wine at retail outlets and certain chain retailers, such as Whole Foods. In 2012, Next Wine retained a law firm to file a trademark application for MY ESSENTIAL. On information and belief, that firm did a trademark search prior to filing the application, which disclosed Bogle’s ESSENTIAL RED trademark. Nevertheless, on June 12, 2012, Next Wine filed a trademark application for MY ESSENTIAL.

The Statement of Use filed for that application claims a first use date of January 10, 2013.

In addition to obtaining a trademark registration for MY ESSENTIAL (No. 4,499,104), Next Wine has also obtained trademark registrations for MY ESSENTIAL RED (No. 4,325,914), MY ESSENTIAL ROSÉ (No. 4,552,519), and MY ESSENTIAL CABERNET (No. 4,718,110). Next Wine has pending trademark applications for MY ESSENTIALWHITE (No. 87/140,357), MY ESSENTIAL PINOT NOIR (No. 87/272,060), and MY ESSENTIAL SAUVIGNON BLANC (No. 87/432,248).

On August 1, 2013, Bogle filed an application with the United States Patent and Trademark Office (“USPTO”) to register the ESSENTIAL RED trademark. However, the USPTO refused to register Bogle’s mark because of Next Wine’s prior registrations of MY ESSENTIAL and MY ESSENTIAL ROSÉ.

Here’s how the arguments and positions at issue in the present motion to dismiss took place:

According to Next Wine, Bogle responded to the USPTO’s refusal to register its mark “by primarily arguing that ESSENTIAL RED was not likely to cause confusion with Next Wine’s MY ESSENTIAL RED.” However, Bogle then petitioned the Trademark Trial and Appeal Board (“TTAB”) to cancel Next Wine’s registrations. Bogle now maintains that it has priority and that there is a likelihood of confusion between the marks. Next Wine requested two extensions to answer the petition in an effort to reach a settlement. Before the expiration of the extension period, Next Wine filed the instant declaratory relief action and a motion to suspend the TTAB proceedings pending the outcome of the instant litigation. The motion to suspend the TTAB proceedings was granted.

On June 22, 2017, Next Wine filed a complaint against Bogle seeking a declaratory judgment of non-infringement of Bogle’s trademark. On July 18, 2017, Bogle filed an answer, as well as the following counterclaims:

(1) Trademark Infringement;
(2) False Designation of Origin;
(3) Unfair Competition;
(4) Restitution for Unjust Enrichment; and
(5) Cancellation of Registered Trademarks.

Next Wine now moves to dismiss all of Bogle’s counterclaims on the basis that they are precluded under prosecution history estoppel.

The court’s opinion:

The court rejected Next Wine’s argument that Bogle couldn’t change its position from the arguments it made about the wine trademark’s effects of confusion between the trademark proceeding and federal lawsuit. In doing so, the court noted that Next Wine “fails to point to any legal authority that prosecution history estoppel—a rule of patent jurisprudence[ ]—has any application in a trademark dispute.”

The court went on to note the current state of the law in these types of trademark disputes where different positions may be taken:

Rather, the case law cited by Next Wine “suggests only that statements made to the [USPTO] in the process of registering a trademark are merely persuasive, not binding.” … (citing Freedom Card, Inc. v. JP Morgan Chase & Co., 432 F.3d 463, 476 (3d Cir. 2005); … Eniva Corp. v. Glob. Water Sols., Inc., 440 F. Supp. 2d 1042, 1049 (D. Minn. 2006)). As explained in Eniva, “courts that have allowed the use of statements made to the USPTO generally consider them only as one factor used to evaluate whether likelihood of confusion exists.” 440 F. Supp. 2d at 1049.

While it’s important to attempt to be consistent in these proceedings, consistency doesn’t present a bar to prosecution of your trademark grievances.