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'To Kalon' Napa Valley trademark case against Constellation Brands gets amended

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An Oakville-based vintner filed an amended complaint late Monday in a trademark case against beverage giant Constellation brands over the right to use the historic To Kalon name.

Last week, San Francisco U.S. District Court Judge Yvonne Gonzalez Rogers granted Constellation’s motion to dismiss the case with leave to amend. In the Monday filing, the plaintiff, The Vineyard House winery, claimed Constellation-owned Robert Mondavi winery fraudulently obtained federal trademark registrations for To Kalon and that To Kalon is an actual geographical location Mondavi purportedly is improperly using and is geographically misdescriptive.

The dispute over who has the right to use the To Kalon name, one of Napa Valley’s most storied vineyards, goes back to the 19th century, to the founding of the To Kalon estate by Napa winemaking pioneer H.W. Crabb. The Historic American Landscapes Survey earlier this year added the vineyard to its registry, noting that variations on the name used over time have been To-Kalon, ToKalon and To Kalon.

Quoting federal statute, Rogers wrote in the dismissal order that an amended complaint should elaborate on how Constellation’s trademark was obtained fraudulently and how it is being used to “misrepresent the source of the goods or services on or in connection with which the mark is used,” as The Vineyard House alleged.

Attempting to buttress the case that the trademarks were fraudulently obtained, attorneys for The Vineyard house wrote in the amended complaint that in 1987 attorneys for Robert Mondavi in a trademark filing wrote “TO-KALON cannot be translated and has no present meaning or significance in the relevant trade or industry.”

The Vineyard House attorneys went on to cite multiple newspaper articles and other evidence writing, “There is also ample evidence to show that Mondavi knew of the fame and geographical indications of the TO KALON name.”

In trying to convince Rogers the trademarks are untrue and misleading from a geographic standpoint, the plaintiff’s attorneys noted Constellation owns 188 acres of the 526 acres of the original Crabb estate, in addition to 361 acres of additional land that were not a part of the original To Kalon property.

“Constellation … refers to its entire property as TO KALON or TO KALON VINEYARD, even though less than half is a part of the original To Kalon estate,” they wrote.

In an emailed statement to the Business Journal after Rogers granted the motion to dismiss, a Constellation spokesperson wrote, “These allegations are without merit. Constellation Brands is committed to operating with the highest degree of ethics and integrity and in full accordance with all applicable laws and regulations, as we have for more than 70 years.”

The Vineyard House did not immediately responded to a request for comment.

The Vineyard House founder Jeremy Nickel, the son of Far Niente Winery founder Gil Nickel, filed the suit in March, alleging Constellation engaged in unfair business practices and seeking cancellation of trademarks, among other complaints.

The Vineyard House claims that because its vineyards are part of the original Crabb estate it has the right to use the To Kalon name, while Constellation, which owns the nearby Robert Mondavi winery and several To Kalon trademarks, does not.

“Through this action, [The Vineyard House] seeks to prevent Constellation from continuing to deceptively use its TO KALON trademark in a manner that is confusing to consumers and deceives them into purchasing wine that may or may not originate from the original To Kalon estate,” the plaintiff’s lawyers wrote in the original complaint.

“Such marking is deceptive and geographically misdescriptive of the origin of the goods,” Nickel’s lawyers added.

Constellation bought into the To Kalon legacy with the 2001 acquisition of Robert Mondavi Corporation, whose founder started his winery in that vineyard in 1966. His revival of the historic name in the late 1970s led to trademark disputes with prominent North Coast grower Andy Beckstoffer, whose holdings include other parts of the vineyard, according to the historic survey report.

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