White Oak Winery fends off trademark infringement

On March 9, a federal court ruled that a New York-based vodka company with sales operations in Los Angeles infringed the trademark of Healdsburg-based White Oak Vineyard & Winery. The court's injunction prohibits White Oak Spirits from using its White Oak trademark.

In a lawsuit filed by White Oak Vineyard & Winery Dec. 24, the vintner alleged that the distiller, which also has offices in Florida, confused consumers by using the White Oak trademark to sell vodka and sponsor events at Los Angeles restaurants and Art Basel Miami Beach.

Marc Hankin, partner with Los Angeles-based Hankin Patent Law, argued for White Oak Spirits that wine and spirits differ sufficiently that the two trademarks would not confuse customers. 'I'm a wine person. I have a 4,000-bottle cellar, and I've never heard of White Oak,' Hankin said in a report on the hearing distributed by Santa Rosa-based Carle Mackie Power & Ross, which represents the winery. He asked the court to reverse its ruling.

Hankin did not return messages to comment on this story.

U.S. Ninth Circuit District Court Judge Michael Fitzgerald disagreed and ordered the spirits maker to post a $100,000 bond — the estimated amount needed to rebrand.

'Clearly it is an established commercial enterprise,' Fitzgerald wrote of White Oak Winery. 'Somebody's drinking it.'

The winery was established in the 1970s by Bill Myers, who primarily made sauvignon blanc, chardonnay and zinfandel. In 1997, the winery brought in Burdell Properties as a partner. Don Groth, vice president and chief investment officer for Novato-based Burdell Properties, serves as chief financial officer of White Oak Winery. Calls to Myers and Groth were not returned.

The winery produces nearly 22,000 cases a year of about two dozen wines.

John Dawson, a Carle Mackie partner and head of its intellectual property department, represented the vintner. He said White Oak Spirits sold its vodka for about a year before his client filed the infringement action. The vodka maker's marketing in Los Angeles had it operating in the winery's home turf, Dawson said.

'Their use anywhere in the United States was also problematic in light of our registered trademark and over 30 years of use of the White Oak brand,' Dawson said. 'This is an extremely strong mark.'

The winery began using the White Oak mark on wine in 1982 and has used it continuously since then, registering it in 2006. Length and priority of use are key considerations in determining a mark's distinctiveness. The winery has policed its trademark in recent years, Dawson said.

White Oak Winery has sold 'millions of dollars' in wine in 40 states, four Canadian provinces, Europe, Asia and other markets, he said.

The injunction makes a favorable ruling on the underlying infringement case likely, Dawson said, which he expects in about 12 months. The winery seeks unspecified damages. 'The reputation and goodwill of a winery reside in its trademark,' Dawson said. 'When infringement occurs, the infringer is essentially usurping the brand as well as the winery's reputation for its own benefit.'

Based on the court's ruling, 'wine and spirits are clearly related goods,' Dawson said, noting that there are few federal court rulings on the issue. As of 2013, courts in the Ninth Circuit District required trademark infringement plaintiffs not only to show the likelihood of consumer confusion over marks, but likelihood of irreparable harm — a high burden — to obtain injunctive relief. Use of the White Oak mark by another beverage maker of any kind would likely be challenged, Dawson said.

Whether the White Oak brand could be used by a company plainly unrelated to beverages is uncertain, he said. Famous trademarks such as Coca-Cola or Disney that have extraordinary penetration into American markets and culture could not be used with any product or service, he said.

'It's a very high standard to establish a famous mark,' Dawson said, and 'obtain a monopoly across the spectrum of all goods and services.' Most producers of goods and services aspire to such strong marks. Once obtained, a famous mark requires constant vigilance to police its use in the marketplace. 'With great benefit comes a great burden,' Dawson said.