Wineries fight in court to decide whose red is really 'essential'
The Sacramento Bee
BY SAM STANTON
Sometimes, even everyday words can lead to a legal fight, especially if they’re printed on the label of a bottle of California wine.

Bogle Vineyards of Clarksburg, a fixture in the Delta since the Bogle family planted its first wine grapes in 1968, is embroiled in such a legal war of words. Bogle is being sued in federal court in Sacramento by another company over which has the right to use the term “essential” on its wine labels.

Next Wine LLC, a Colorado firm that bases its business in Tucson, Ariz., and sells California wine, claims in its lawsuit that Bogle has tried to bully Next Wine into scrapping its “My Essential” wine labels. Bogle makes its own line of award-winning, affordable wines labeled “Essential Red.”

The lawsuit was filed two weeks ago following three years of dispute and competing claims in the U.S. Patent and Trademark Office, as well as talks between the two wine companies aimed at resolving the conflict.

On the surface, the argument seems silly.

The labels from the two winemakers look nothing alike. Next Wine’s looks like a splotch of cabernet has been spilled onto a white label, with the word “Essential” at the top; Bogle’s features the family name prominently displayed on its label, with the words “Essential Red” below in smaller type.

Neither side responded to requests for comment this week, but there is serious money at play in the market for wine and other alcoholic beverages.

Bogle’s family-run wine operation started out small, but by 2009 the vineyard began building a $60 million wine storage and fermentation facility. The lawsuit comes in an area of litigation that has been seeing explosive growth.

“There are probably more federal and state court trademark litigations pending in the alcoholic beverage space at present than ever before,” said John Dawson, a partner in the Carle, Mackie, Power & Ross law firm in Santa Rosa, and a member of the firm’s wine group. “From April through May, I had eight federal trademark infringement cases and one state court trademark cancellation proceeding in California, all of which involved wine producers, so we’re talking about hundreds on an annual basis around the country.”

The reason is simple: Americans are drinking more booze of all kinds, including craft beers, ciders, specialty cocktails and wine, Dawson said, and there has been an “incredible surge” of new beverage companies.

“With all these new entrants, there’s more trademarks being filed in alcoholic beverages than almost any other consumer food or beverage product,” said Dawson, who is not involved in the Next Wine-Bogle case. “Because of that, people are more willing to fight for their brands than ever before.”

Legal fights over beverage trademarks have become so prevalent that the Boston-based law firm of Foley Hoag publishes a year-end blog roundup of such cases. Last year’s version included a dispute between San Francisco’s 21st Amendment Brewery and a bar in New Orleans’ French Quarter that was denied its bid to a similar name and logo by the trademark office.

Another involved Portland’s Hopworks Urban Brewery and its “Abominable Winter Ale.” Hopworks discovered that Seattle’s Fremont Brewing Co. was selling a beverage it called “Abominable Ale.”

“The parties apparently got on the phone and determined that Hopworks used ‘Abominable’ first, so Fremont took to Twitter and announced that it was removing the word from its brew’s name,” the blog reported. “In response to its fan questions, Fremont tweeted: ‘Litigation is for suckers, craft beer is for lovers.’ ”

The dispute between Next Wine and Bogle did not end so tranquilly, despite what the lawsuit describes as repeated settlement efforts.

Next Wine says it organized in May 2012 to produce and market its wines, and that it submitted papers in June 2012 for a trademark on “My Essential Red.” Next Wine began selling its reds in January 2013, the lawsuit says, and the patent and trademark office registered “My Essential Red” in April 2013.

The firm also moved forward with plans for essential lines of white, pinot noir and other wines.

The same month that Next Wine was getting started, the lawsuit says, Bogle claims to have begun selling its “Essential Red.” Bogle applied for a trademark in August 2013, but the trademark office rejected the application three months later “because of a likelihood of confusion” with Next Wine’s brand, the lawsuit says.

Bogle responded in May 2014, “vigorously arguing that there would be no likelihood of confusion between the two brands,” the lawsuit says, and the two companies began talking about a “coexistence agreement.”

By fall 2016, Bogle asked Next Wine to sign an agreement, but Next Wine declined, in part because the deal would have given Bogle the right to pre-approve any new “My Essential” wine labels Next Wine came up with, the suit says.

Talks continued until April, after which the lawsuit says Bogle “made clear that Next Wine’s My Essential wines cannot coexist in the marketplace” with Bogle’s Essential Reds and demanded that Next Wine abandon its use of the essential wording.

Next Wine says it wasn’t willing to give up its name, given the time and effort it has spent developing its business. Instead, the company sued, asking the court to declare that it is not infringing on Bogle’s rights by using “My Essential” on its labels.

Whether the two winemakers will fight this out in court remains to be seen.

“Most cases settle,” Dawson said. “The question is, when? If they don’t settle within the first three months, that’s not a great sign for a near-term settlement.”
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