April 1, 2020

Descriptive Use or Trademark Infringement?

It was no April Fools Day joke: JaM Cellars, Inc. sued The Wine Group LLC for trademark infringement and unfair competition, complaining that Franzia’s BOLD & JAMMY boxed wine infringes their JaM trademark:

JaM | Intellectual Property Law Firm | Harness IP

The suit also complained that Franzia’s RICH & BUTTERY wine infringed JaM’s BUTTER wine:

butter | Intellectual Property Law Firm | Harness IP

JaM’s name is a mash-up of the owner’s names:

While BOLD & JAMMY is arguably a description of Franzia’s wine, “jammy” (according to Wikipedia) is a common descriptor for wine: “Jammy: A wine that is rich in fruit but maybe lacking in tannins.”

Is Franzia describing, infringing, or both?

Butter is arguably descriptive of JaM’s Butter Chardonay. JaM says:

butter chardonay | Intellectual Property Law Firm | Harness IP

According to wikipedia, buttery, like jammy, is a common descriptor of wine: “Buttery: A wine that has gone through malolactic fermentation and has a rich, creamy mouthfeel with flavors reminiscent of butter.”

Again, the question is whether Franzia is describing its product, infringing JaM’s marks, or both.

Franzia’s biggest vulnerability may come from the change in its packaging, which JaM attributes to an intent to trade off of JaM’s goodwill:

JandM 1 | Intellectual Property Law Firm | Harness IP JandM2 | Intellectual Property Law Firm | Harness IP

Both sides may need to brush up 15 USC 1115(b)(4), which provides:

That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin