A defensible trademark isn't as simple as putting your name on it, attorneys explain

Many wineries and other businesses adopt the names of their founders: Samuele Sebastiani became Sebastiani Vineyards; Jacob Gundlach launched Gundlach Bundschu Winery; Jacob Beringer gave his name to Beringer Vineyards. Mary Fazio lent her first name to Mary's Pizza Shack in 1959; the company now has some 20 restaurants throughout the Bay Area.

While naming a business after its founders' first or last name makes sense in its early years, that can spawn complications later, such as the Duckhorn Wine Company's trademark infringement lawsuit settled in August 2014 against Trinchero Family Estates' Sutter Home Winery, Duck Commander and Wal-Mart Stores.

Dan and Margaret Duckhorn started St. Helena-based Duckhorn Vineyards in 1976, with a focus on merlot and top-quality estate-vineyard wines that sell for $50 or more a bottle.

In that case, filed in U.S. District Court in San Francisco, Duckhorn sued to stop Duck Commander from marketing wines in Wal-Mart for prices near $10. Duck Commander, the name of a duck call and decoy used in hunting and the company that sells them, was founded in 1972. Duck Commander company, owned by the Robertson family of Louisiana, sells hunting gear, food, knives, books and clothing with estimated revenue of some $40 million. Duck Dynasty, an A&E Television Networks reality show about the Robertson clan, was developed by Walt Disney Company and Hearst Corporation. The show launched in 2012 and produced hundreds of millions of dollars in revenue.

Scott Gerien, partner in the Dickenson, Peatman & Fogarty law firm in Santa Rosa, represented Duck Commander, Sutter Home Winery and Wal-Mart in the case. The settlement was confidential, but Duck Commander continued selling wine already produced under that label. 'The wines continue to be in the marketplace after the settlement,' Gerien said.

The Trinchero Family Estates website for Duck Commander Wines of St. Helena bears a 2016 copyright notice beneath the Robertson Family Wines name note: 'Cheers from our family to yours! The Robertson Family is proud to collaborate with the Trinchero Family of the Napa Valley in producing quality wines for all to enjoy.'

A search for Duck Commander wine showed no products dated after 2013, suggesting that the Robertson family may have stopped making duck-labeled wine. 'That might be more attributable to market issues,' Gerien said, 'than to the outcome of the lawsuit. Not every brand always continues.'

'Duckhorn has set the standard for American fine wine for over three decades,' the lawsuit claimed, citing Trinchero as the largest producer of wine in Napa Valley. Duckhorn was represented by Henry Bunsow, partner in Bunsow, De Mory, Smith & Allison based in Redwood City. 'Trinchero has the capability to flood the domestic market with wine bearing the infringing Duck Commander name and duck label motif particularly through the massive distribution channel of Wal-Mart stores,' the lawsuit said.

'The Duckhorn brand and label … was well known to Trinchero long before Trinchero decided to join forces with DCI (Duck Commander) and Wal-Mart to infringe upon Duckhorn's rights,' the lawsuit alleged.

Duck Commander sold products including food and clothing before branching into wine, Gerien argued. 'They had that brand for many years,' he said. 'People are not going to be confused because Duck Commander is known as its own brand apart from Duckhorn. We found it easy to settle,' he said. 'We didn't feel like we gave up a whole lot. The Robertsons were very well known. No consumer was going to be confused between Duck Commander wine and Duckhorn wine.'

Huge companies such as Virgin Group spend large amounts of money definding their name, Gerien said. 'They are aggressive,' even against olive-oil companies. He defended a client 'against (Virgin Group) because they had 'virgin' related to their olive oil,' he said.

The Spaulding McCullough & Tansil firm in Santa Rosa also handles name-brand litigation, where confusion in the marketplace usually determines outcome. 'We're the lawyers ending up with these fights,' said partner Greg Spaulding, who notes that many start with a cease-and-desist letter demanding that an alleged infringer stop marketing a brand with the same or a similar name as a client's.

Where a business owner has used his or her own name as a brand and then sells the business, usually the buyer will retain the company name. With a winery, for instance, the seller will typically not be able to use that name again in a similar business — sometimes not in any business.

Internal disputes can raise tricky issues around a business name. If a founder whose name is on the business seeks outside investors to raise capital, then investors later take over the business and eject the founder, usually they retain the name. 'They own it,' Spaulding said.

With a name of sufficient stature, even dissimilar businesses can be affected. In 1989, a federal court granted Ernest and Julio Gallo the right to retain exclusive use of their name and ordered brother Joseph Gallo to stop using Gallo on his cheese brand.

There's a difference between trademark rights and the right of publicity surrounding a person's name. A business founder who hasn't formally lent her name to a business or been compensated for doing so can yank the name back. Perfume maker and opera singer Mary Garden did that in about 1933, Spaulding said, taking her name back when an acquirer of her company years later tried to register the name as his trademark, but without her consent. 'It was gratuitous,' Spaulding said. 'She didn't get paid.'

Where a person starts a company using her own name and that brand becomes associated with quality, such as exceptional wine, then the company sells and new owners decide to downgrade quality to sell more volume, the name can become tricky. The original owner may 'walk away with the name,' Spaulding said, depending on whether formal agreement was made.

'You created this wine image,' Spaulding said. 'They sell for $80 a bottle. If that name stayed with these other guys and they start making crap, they're trading on your name and spoiling' it.

Warren Dranit, a partner and intellectual-property expert at the firm, said California protects business owners who slap their names on companies. 'When Marilyn Monroe died,' Dranit said, the estate 'asserted that she was domiciled in New York because they wanted to avoid estate taxes in California.'

The right of one person to use the name of another in business, even if acquired for money, may go away upon the death of the person whose name was branded. 'California has strong right-of-publicity laws,' Dranit said, especially while people are alive, and to protect celebrities' names after their death. Monroe's estate sought to have California's stronger right-of-publicity laws apply even though it avoided taxes by having her domicile declared in New York. 'They wanted to monetize her name, make money off her images, her name,' Dranit said. The court denied the request.

'We all have rights in our names,' Dranit said. 'Sometimes we wind up giving up those rights intentionally or unintentionally. When we start integrating them into a business, it has implications.' A business owner considering naming a business after his or her name can check to see if a famous person has right-of-publicity to the name. 'Are you creating false association with that person,' Dranit said, in attempting to monetize a name. When the name becomes a product name, a business entity, the potential for conflict arises.

The right of publicity protects a person from having others commercialize that person's name. Confusion in the marketplace with a person or trademark can result in litigation, Dranit said. Business owners can reduce litigation by checking in advance about existing uses before deciding on product or business names.

'Are you trying to create a legacy product?' Dranit said. 'Do you want this name to go on whether you are there or not? Maybe you can define the conditions on which that name goes forward' with an explicit contract or by licensing the name.

McDonald's famous mark derived from Richard and Maurice McDonald, who opened a drive-in restaurant in San Bernardino in about 1940. They purchased milk-shake machines from Raymond Kroc, who sold Prince Castle Multimixers. Kroc joined the business in 1954 and helped expand it into a franchise. Fame sends a trademark or name with right of publicity into a higher category of protection, where 'blurring' and 'tarnishment' factors enter potential litigation.

'You couldn't open anything — could not touch a food item and call it Mc-anything,' Dranit said, 'without getting squished. That's a technical legal term.'

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