Dispute over “Essential Red” Spills into Federal District Court

July 13, 2017

Although consumers do not typically think about the regulatory devices which operate behind labels affixed to prospective wine bottles while searching for the perfect bottle of red, the wine industry has many behind the scenes disputes that involve judging a bottle by its cover.

One of these disputes is over labeling wine as “essential red.”  Next Wine, LLC (“Next Wine”) filed a lawsuit against Bogle Vineyards (“Bogle”) requesting the court to issue a declaratory judgment of noninfringment under Lanham Act last month. In an effort to continue using its “My Essential” wine bottle label, Next Wine filed the lawsuit for a declaratory judgment to assert Bogle is not infringing with its “Bogle Vineyards Essential Red” bottle. Next Wine included a picture of both labels to support its assertion that there is no likelihood of confusion. According paragraph 34 of the complaint, “Bogle has made it clear that it believes that Next Wine’s ‘My Essential’ wines cannot coexist in the marketplace with Bogle’s wine labeled ‘Bogle Vineyards Essential Red.’”

This dispute has been aged over the course of several years. According to paragraph 14 of Next Wine’s complaint, an examining attorney at the U.S. Patent and Trademark Office would not register Bogle’s application to register “Essential Red” because there was a likelihood of confusion with Next wine’s “My Essential Red” which was already pending. The complaint further alleged that Bogle contacted Next Wine in 2014 to discuss a “coexistence agreement,” but did not contact Next Wine again until 2016. From 2014 to 2016, Next Wine asserted that the “My Essential” wine business had experienced growth. The 2016 proposal for a coexistence agreement included a requirement for “Next Wine to submit all new ‘My Essential’ label designs developed by Next Wine for Bogel’s approval.” The two parties did not reach an agreement. The dispute stemming from the wine labels poured over into the complaint, creating a slightly bitter aftertaste.

Bogle has already taken administrative action, by filing a Petition to Cancel Next Wine’s “My Essential” with the Trademark Trial and Appeal Board. However, this is the first lawsuit to originate from the tense climate of their dispute.  According to Next Wine, Bogle’s first warning letter requested Next Wine to stop producing and selling certain wine with the “My Essential” marks after the existing inventory ran out, with the exception of the three which were already registered. After receiving the letter, Next Wine claims the company “grew increasingly concerned, not only at the thought of having to commit substantial time and expense towards rebranding but also at the prospect, based upon Bogle’s threats, that Bogle would pursue litigation beyond the TTAB proceeding.” Essentially, Next Wine worried that it would be hard-pressed to create a new label to adorn its bottles.

According to the complaint, Bogel’s position is as clear as chardonnay:

Bogle has made clear that it believes that Next Wine’s MY ESSENTIAL wines cannot coexist in the marketplace with Bogle’s wine labeled BOGLE VINEYARDS ESSENTIAL RED Bogle has demanded that Next Wine abandon its MY ESSENTIAL Mark. Because Next Wine did not wish to rebrand, cancel or abandon its marks, and planned to further develop its MY ESSENTIAL wine varietal brand, the only way that Next Wine would leave the marketplace would be if Bogle forced it out with infringement litigation.

The Eastern District of California is expected to decant the arguments served from both sides, and pair it with a strong judicial note.

Photo source: REUTERS/Stefano Rellandini

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