Defending 'Butter' wines: Napa's JaM Cellars goes back to court to defend trademarked brand
Napa-based JaM Cellars Inc. is suing Livermore-based The Wine Group LLC, one of the largest vintners and maker of the Franzia brand of value wines, alleging trademark infringement.
JaM Cellars alleges in a federal complaint filed April 1 that The Wine Group's newly launched Franzia Bold & Jammy cabernet sauvignon box wine “is likely to cause consumer confusion, deception or mistake” as to the source of the wine, as the Napa vintner had registered “Jam” and “Jam Cellars” with the U.S Patent and Trademark Office in 2010.
This action follows an ongoing trademark-infringement suit JaM Cellars filed against The Wine Group a year ago, claiming the Franzia Rich & Buttery chardonnay box wine is confusing consumers when in the marketplace with JaM Cellar's Butter chardonnay. The Napa company registered the “Butter” mark also in 2010.
JaM Cellars' attorneys wrote that they learned about the forthcoming Bold & Jammy label during litigation of Rich & Buttery. The Napa wine company also had sued The Wine Group in 2017 for trademark infringement over a “Butterkissed” chardonnay label produced for the Cupcake Vineyards brand, and they learned of the Rich & Buttery label during that action.
That matter was resolved in July 2018 “to the mutual satisfaction” of both wine producers, and Butterkissed was moved to secondary Cupcake label, according to court documents.
The Wine Group in a statement challenged JaM Cellars' ability to use those words in a trademark and called the allegation of infringement “offensive.”
“The terms ‘buttery' and ‘jammy' are among the most common descriptors that exist for wine,” wrote John Sutton, chief financial officer of The Wine Group. “The complainant made the choice to use those terms in their brands and should have to live with other wineries using those familiar phrases to describe their products.”
Attorneys for JaM Cellars couldn't be reached for comment. JaM Cellars is seeking court costs and unspecified damages in the two most recent cases with The Wine Group.
Over 1.6 million bottles (more than 133,000 12-bottle cases) of JaM cab have been sold since it debuted in 2009, totaling $15.9 million at wholesale, according to the latest filing.
JaM's Butter is said to be the second-best-selling chardonnay in the U.S. for its price tier ($15-$25 a bottle or $20 for four-pack of aluminum cans), with $150 million at wholesale since it was released in 2010, with over $50 million just last year ($90 million at retail), per the lawsuit filed last year.
The company said it has spent $35 million in advertising and marketing all the wines, according to the court documents.
The Wine Group in the statement said the Franzia brand sells the equivalent of 24 million cases annually.
JaM Cellars has been vigorous in trademark actions over Butter and JaM since they were registered, according to court records. The first lawsuit was against Cult of 8 (Alcohol by Volume) in 2013 for the Bread & Butter label, and it settled in early 2015. Other lawsuits included 2017 actions against Plata Wine Partners (Buttercream), Rubin Wines (Buttery Babs and Buttery Barb), Vintage Wine Estates (Butterknife Wines) and O'Neill Beverages (Butterball), now part of Vintage.
The Wine Group vowed to fight on in court this time.
“The complainant has been suing others in the industry over this same issue for years, including those who may not have the resources to fight back as we can,” Sutton wrote. “We will stand up for all of us in the industry who are merely trying to describe our wines using common wine descriptors.”
JaM Cellars' lawsuits are amid 30 protests it has made since 2013 to the Trademark Trial and Appeal Board since 2013 against filings, according to the Patent and Trademark Office.
After a filing is published publicly, mark holders can submit letters of protest to the trademark office attorney reviewing the filing, according to David Sharisi, principal attorney of LA Tech & Media law in Los Angeles. If the mark is approved, there's a 30-day window to appeal that approval to the board before a mark is registered.
“A lot of litigation happens during that time,” Sharisi said. “A lot of this is public information, so you can find out when it is published then file before that window with cease and desist letters.”
Legal industry figures note that 2% to 3% of trademark applications are contested during the application window.
Jeff Quackenbush covers wine, construction and real estate. Contact him at firstname.lastname@example.org or 707-521-4256.
This story was updated April 30 with a statement from The Wine Group about the case.