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.”