The Vineyard House, LLC v. Constellation Brands U.S. Operations, Inc.

Background

The Vineyard House, LLC moved for a preliminary injunction, asking the court to prevent Constellation Brands U.S. Operations, Inc. from using the mark “To Kalon Vineyard Company.” The court heard oral argument on January 7, 2020, after the parties submitted briefing.

Court’s analysis

The court denied the motion. It first found that The Vineyard House had not shown a likelihood of success on the merits with clear and convincing evidence. The court stated that a false-advertising claim cannot be based on a trademark owner’s use of its own registered mark when, as the court concluded applied here, the registrations are incontestable. The plaintiff therefore had to show a basis for cancelling the defendant’s trademarks.

The court explained that cancelling a trademark registration for fraudulent procurement requires fraud to be proven “to the hilt” with clear and convincing evidence, without relying on speculation, inference, or surmise. Although the briefing contained some evidence and the plaintiff might succeed at trial, the court found that the existing record did not meet that heavy burden.

The court also found that the plaintiff’s delay in seeking an injunction weighed against finding irreparable harm, meaning harm that cannot adequately be remedied later. The defendant and its predecessor had sold wine for decades under the “To Kalon” and “To Kalon Vineyard” labels. The defendant had notified the plaintiff in May 2019 that it intended to sell a limited wine under the “To Kalon Vineyard Company” mark beginning in September 2019, but the plaintiff did not file its motion until November 18, 2019. The court also noted that the motion did not seek to stop the defendant’s continued use of the nearly identical existing marks.

Disposition

Judge Yvonne Gonzalez Rogers denied The Vineyard House’s motion for a preliminary injunction. The order terminated Docket Number 45.