Seattle Trademark Lawyer

Plaintiff One True Vine, LLC, sells wine under the LAYER CAKE trademark. Defendant The Wine Group LLC under the CUPCAKE trademark. OTV sued Wine Group in the Northern District of California for trademark infringement.

Some background: OTV filed an intent-to-use application for the LAYER CAKE mark with the PTO in March 2006. Its application stated OTV intended to use the mark in connection with “white wine, red wine.” The PTO published the mark for opposition in August 2006. The opposition period closed, the application was allowed, OTV submitted its statement of use and supporting declaration, and the PTO issued a registration.

The wrinkle is OTV admitted that it does not sell, and has never sold, white wines under its LAYER CAKE mark. OTV has only sold red wines under that mark. Plaintiff contends it did not realize that the statement of use included “white wine, red wine” and not merely “wine.”

In October 2007, Wine Group filed an application to register its CUPCAKE mark for use in connection with “wine.” The USPTO published the mark for opposition in February 2008. In May 2008, during the opposition period, OTV sent Wine Group a letter demanding that Wine Group abandon its application to register the CUPCAKE mark and cease using the CUPCAKE mark on its wines. When Wine Group made no move to do so, OTV opposed Wine Group’s application. After determining that OTV never sold white wine under the LAYER CAKE mark, Wine Group moved to amend its answer to OTV’s notice of opposition before the Trademark Trial and Appeal Board to include a counterclaim for cancellation of OTV’s registration based on fraud.

OTV filed its lawsuit in March 2009. In April 2009, the TTAB suspended proceedings pending final disposition of this action. Wine Group answered the complaint and counterclaimed for cancellation based on fraud. In May 2009, Wine Group filed a motion for summary judgment on its counterclaim, which the court denied.

OTV then moved to amend its registration to delete “white wine” from the listed goods. This amendment would modify the listing of goods on which the LAYER CAKE mark is used in commerce to read “red wine” instead of “white wine, red wine.” OTV argued it has good cause to amend the register because the register is a public document that provides notice to the public and should therefore be made accurate. Plaintiff further argued that such an amendment would alter only the list of products used in connection with the mark, not the mark itself.

On Nov. 4, the court granted OTV’s motion.

“Defendant [Wine Group] does not argue that such an amendment would materially alter the character of the mark. Rather, defendant argues that the motion is ‘both too late and too early.’ According to defendant, the proposed amendment is too late because plaintiff [OTV] has failed to amend the registration in the past — and because plaintiff has already asserted the existing registration in the TTAB and in this court, as the basis for its infringement claim. Defendant points to no authority, however, suggesting the existence of a time limit on the court’s authority to correct the register pursuant to the Lanham Act.

“Defendant also argues that the proposed amendment is too early. This is so, according to defendant, because defendant’s counterclaim to cancel plaintiff’s registration has not yet been adjudicated. Defendant is apparently concerned that such an amendment will in some way moot or invalidate its counterclaim. Yet plaintiff cannot nullify a claim that it procured its trademark through fraud on the USPTO by now amending its trademark registration. If, as defendant alleges, plaintiff committed fraud on the USPTO, a post hoc amendment of the trademark register does not serve to moot or rectify such fraud. Granting the instant motion does not render the counterclaim moot. Accordingly, there is no reason not to amend the register to correct what all agree is erroneous information.”

The case cite is One True Vine, LLC v. Wine Group LLC, 2009 WL 3707512, No. 09-1328 (N.D. Calif. Nov. 4, 2009).