JaM Cellars, Inc. v. The Wine Group LLC

Background

JaM Cellars, Inc. sued The Wine Group LLC over The Wine Group’s use of “BUTTERY” and “RICH & BUTTERY” to describe or identify a Franzia Chardonnay product. JaM produced its first BUTTER Chardonnay in 2009, released it in 2010, and obtained federal registration of the “BUTTER” trademark in 2011.

The Wine Group sought summary judgment, which is judgment without a trial when no genuine dispute over an important fact exists and the moving party is entitled to win under the law. It argued that its use of “RICH & BUTTERY” was not likely to confuse consumers and that, even if confusion were possible, the use was protected by the trademark fair-use defense. The parties also filed motions asking to keep portions of their briefs and exhibits under seal.

Trademark-confusion analysis

The court applied the eight factors used in the Ninth Circuit to evaluate likely consumer confusion: the marks’ similarity, the strength of the plaintiff’s mark, the relatedness of the goods, the defendant’s intent, actual confusion, marketing channels, possible expansion into other markets, and the care consumers are likely to use when purchasing the defendant’s product.

The court accepted that there was no evidence of actual consumer confusion, but it found material factual disputes concerning at least three important factors. First, the parties disputed the conceptual strength of “BUTTER.” The Wine Group argued that the word merely described a Chardonnay flavor, while JaM argued that consumers had to associate butter with wine before understanding the mark’s meaning. The court stated that a reasonable jury could find the mark suggestive and therefore strong, although it also agreed that similar uses of the word in the marketplace could weaken the mark.

Second, the court found a factual dispute about whether the products were related. Although the wines used different packaging and had different price structures, both were Chardonnay products associated with a buttery flavor profile. The court also considered evidence that The Wine Group had identified JaM’s BUTTER wine as a target while developing its product.

Third, the court found a factual dispute about the similarity of the marks. The marks differed in typeface and presentation, but both appeared centrally on their packaging, “RICH & BUTTERY” contained the word “BUTTER,” and both conveyed a buttery flavor profile. Evidence also could support treating “RICH & BUTTERY” as a product or brand name rather than merely a description.

Because a reasonable jury would not necessarily have to conclude that consumer confusion was impossible, the court held that summary judgment was not appropriate. The court emphasized that it was not making factual findings or final legal conclusions and was identifying only examples of disputed facts.

Fair-use defense

The court also denied summary judgment based on fair use. Under the defense described in the opinion, The Wine Group had to show that it used the term for a purpose other than as a trademark, used it to describe characteristics of its goods, and acted in good faith.

The court found a factual dispute about whether The Wine Group used “RICH & BUTTERY” to describe the wine or as the product’s name. The use of “buttery,” rather than “butter,” supported The Wine Group’s descriptive-use argument to some extent, but the connection between the terms and the prominence of “RICH & BUTTERY” prevented judgment as a matter of law at this stage. The court stated that it remained possible that judgment could be appropriate at or after trial.

Motions to seal

The court denied the parties’ administrative motions to seal. It applied the standard requiring compelling reasons, supported by specific facts, to overcome the public’s strong presumptive right of access to judicial records. It also noted that sealing requests must be narrowly tailored to material that is privileged, a trade secret, or otherwise legally protected.

The court found that the parties had not narrowly tailored their requests. Among other problems, the requests sought to redact information that appeared unredacted elsewhere, attempted to seal a press interview discussed publicly in the complaint, and provided limited explanations for sealing substantial portions or entire exhibits. The court directed the parties, within ten days of the order, to file public versions of the motions and exhibits or amended sealing motions that narrowed the requested redactions.