Pennsylvania Record

Monday, December 9, 2019

'Likelihood of confusion' is standard at issue in winery trademark case

By Jamie Kelly | May 23, 2016

Trademark 08

PHILADELPHIA — In order to prevail in its recently filed trademark infringement case, California winery Wilson’s Vineyards will have to prove that there’s a likelihood consumers would confuse it with Pennsylvania-based Wilson’s Vineyard.

Jonathan M. Gelchinsky, an attorney with Pierce Atwood LLP who specializes in trademark law, said the questions that courts look at during trademark litigation is whether there’s a likelihood of confusion.

“It’s not whether actual consumers have been confused, but whether they’re likely to be confused,” Gelchinsky recently told the Pennsylvania Record.

Sometimes, he said, plaintiffs are able to present evidence that a consumer was actually confused, which can help their case.

“Actual confusion is very good evidence that there's a likelihood of confusion,” he said.

In March, California-based Wilson’s Vineyards sued Wilson’s Vineyard, in Pennsylvania, claiming that the latter had been unfairly trading on its good name, and that the Pennsylvania winery had impersonated it online.

The court considers how similar two marks are, not just in terms of how they’re spelled or how they look, but also how they sound and the meaning of the words. The fields in which the two marks are used is also a factor.

The more similar the fields, the more likely confusion becomes, he said, but neither the marks nor the fields need to be identical.

“A very critical question is how strong is the mark of the plaintiff,” he said. “Is it a distinctive term, or is it a commonly used descriptive term?”

More distinctive terms make for stronger marks and therefore get broader protection.

Rob Wallace, who serves as an expert witness in trademark infringement cases, noted that some marks that use descriptive terms that are in common use can lose protection. He gave an example of a case where the mark “Smart Vent” was at issue.

When asked to give an opinion, he told the court that it wasn’t a strong mark because of how commonly "smart" is applied as an adjective.

“'Smart' is used for so many things that it’s now a generic for something that does a function automatically,” he said.

Other factors that could affect trademark cases include how strong a company’s reputation is, as that could entitle it to broader protection, Gelchinsky said. He gave the example of multiple companies in different fields all having the same name. If yet another company started up and used the same name, as long as it wasn’t directly competing with one of the already established companies, that might be OK.

“As long as it's not too close of any of those, there might not be any problem,” he said.

Paul J. Kennedy of Pepper Hamilton LLP, who is representing Wilson’s Vineyard in Pennsylvania, declined to comment on the case.

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