Westside Windery v. Sans Liege - Grasshopper Wine Trademark Complaint PDF

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 1 of 13 Page ID #:1
1 Jon A. Birmingham (CA SBN 271034)

FITCH, EVEN, TABIN & FLANNERY LLP
2
21700 Oxnard Street, Suite 1740
3 Los Angeles, California 91367
Telephone: (818) 715-7025
4
Facsimile: (818) 715-7033
5 Email: jbirmi@fitcheven.com
6
Attorney for Plaintiffs

7 WESTSIDE WINERY LLC AND THACHER WINERY & VINEYARD, INC. D/B/A THACHER
WINERY
8
9
10
UNITED STATES DISTRICT COURT
11
CENTRAL DISTRICT OF CALIFORNIA
12
13
WESTSIDE WINERY LLC AND THACHER

14 WINERY & VINEYARD, INC. D/B/A/
THACHER WINERY,
15
16
17
Plaintiffs,
v.
Civil Action No.

COMPLAINT FOR TRADEMARK AND TRADE
DRESS INFRINGEMENT AND UNFAIR
COMPETITION
DEMAND FOR JURY TRIAL
18
SANS LIEGE INC., THE FABLEIST WINE
COMPANY, 22 HUNDRED CELLARS, INC.
20 D/B/A FIELD RECORDINGS WINERY, CURT
SCHALCHLIN, AND ANDREW JONES,
21
19
22
Defendants.
23
24
25
26
27
28
1
1
2
COMPLAINT
Plaintiffs, Westside Winery LLC and Thacher Winery & Vineyard, Inc. d/b/a
3 Thacher Winery (individually and collectively referred to herein as Thacher Winery),

4 bring this suit for trademark and trade dress infringement and federal, state and common
5 law unfair competition against Defendants, Sans Liege Inc., The Fableist Wine Company,
6 22 Hundred Cellars, Inc. d/b/a Field Recordings Winery, Curt Schalchlin, and Andrew
7 Jones, and alleges as follows:
8
9
10
NATURE OF ACTION, JURISDICTION AND VENUE

1.
This Court has original subject matter jurisdiction over this action pursuant to
11 28 U.S.C. 1331 and 1338(a) and 15 U.S.C. 1121. This Court has original subject
12 matter jurisdiction over this action pursuant to 28 U.S.C. 1331 and 1338(a) and 15
13 U.S.C. 1121.
14
2.
This is a complaint for trademark and trade dress infringement and unfair
15 competition arising under Section 43(a) of the Lanham Act, 15 U.S.C. 1114 and
16 l125(a) regarding use of Defendants mark for wine products and services, which is
17 identical, indistinguishable or highly similar and confusingly similar to Thacher Winerys
18 common law Grasshopper marks used in connection with wine products and services and
19 federally registered Grasshopper marks for wines.
20
3.
This Court has supplemental jurisdiction over the state law claims pursuant
21 to 28 U.S.C. 1338(b) and 1367(a) as all claims herein form part of the same case or
22 controversy.
23
4.
This Court has personal jurisdiction over Defendants because, among other
24 things, Defendants conduct and solicit business in this jurisdiction and, on information
25 and belief, are residents in this jurisdiction and/or have committed at least some of the
26 conduct discussed herein in this district.
27
28
2
5.
Venue is proper in this district under 28 U.S.C. 1391(b) as Defendants are
2 resident in this district and a substantial part of the events giving rise the claims herein
3 occurred in this district.
4
5
6
PARTIES
6.
Westside Winery LLC, which has done business as Thacher Winery, is a
7 California Limited Liability Company having a principal place of business at 8355

8 Vineyard Drive, Paso Robles, California 93446. Westside Winery LLC is the owner of
9 premises and assets used in vineyard agriculture and wine production, including but not
10 limited to trademarks, trade identity, and trade dress asserted in this complaint.
11
7.
Thacher Winery & Vineyard, Inc. d/b/a Thacher Winery is a California
12 corporation having a principal place of business at 8355 Vineyard Drive, Paso Robles,
13 California 93446. Thacher Winery & Vineyard, Inc. d/b/a Thacher Winery is in the
14 business of vineyard agriculture and wine production with sales and distribution of
15 produced wine and related products and services, all as the authorized user of trademarks,
16 trade identity, and trade dress asserted in this complaint.
17
8.
On information and belief, Sans Liege Inc. is a California corporation having
18 a place of business at 870 Price St., Pismo Beach, California 93449. On information and
19 belief, Sans Liege Inc. is in the business of wine production with sales and distribution of
20 produced wine. On information and belief, Sans Liege Inc.s wine products and services
21 are sold in competition with Thacher Winerys products and services.
22
9.
On information and belief, Curt Schalchlin is an individual residing and
23 doing business in the State of California, having a principal place of business at 870 Price
24 St., Pismo Beach, California 93449. On information and belief, Curt Schalchlin is in the
25 business of wine production with sales and distribution of produced wine. On information
26 and belief, Curt Schalchlins wine products and services are sold in competition with
27 Thacher Winerys products and services.
28
3
10.
On information and belief, The Fableist Wine Company, formerly named
2 Cane & Fable Wines, Inc., is a California corporation having a place of business at 460
3 Marquita Ave., Paso Robles, California 93446 and an agent for service at 100 West
4 Broadway, Suite 100, Glendale, California 91210.
On information and belief, The
5 Fableist Wine Company is in the business of wine production with sales and distribution
6 of produced wine. On information and belief, The Fableist Wine Companys wine
7 products and services are sold in competition with Thacher Winerys products and
8 services.
9
11.
On information and belief, Andrew Jones is an individual residing and doing
10 business in the State of California, having a place of business at 460 Marquita Ave., Paso
11 Robles, California 93446. On information and belief, Andrew Jones is in the business of
12 wine production with sales and distribution of produced wine. On information and belief,
13 Andrew Jones wine products and services are sold in competition with Thacher Winerys
14 products and services.
15
12.
On information and belief, 22 Hundred Cellars, Inc. d/b/a Field Recordings
16 Winery is a California corporation having a place of business at 460 Marquita Ave., Paso
17 Robles, California 93446. On information and belief, 22 Hundred Cellars, Inc. is in the
18 business of vineyard agriculture and wine production with sales and distribution of
19 produced wine. On information and belief, the wine products and services of 22 Hundred
20 Cellars, Inc. d/b/a Field Recordings Winery are sold in competition with Thacher
21 Winerys products and services.
22
23
FACTS COMMON TO ALL COUNTS
24
13.
Thacher Winery was founded in 2004 in Paso Robles, California.
25
14.
Thacher Winery began vineyard agriculture operations and producing wines
26 at least as early as 2004 in connection with a Grasshopper mark for its business, trade
27 identity, trade dress, packaging and product labeling, and in marketing and other
28 promotional information and materials.
4
15.
The image of the grasshopper is associated with the name Thacher and is
2 part of the traditional Thacher family crest.

3
16.
From the time that Thacher Winery began vineyard agriculture operations
4 and producing wines, the wine industry and the wine consuming public have known
5 Thacher Winery to use the distinctive, non-functional image of a grasshopper as trade
6 dress on its wine label and elsewhere, such that Thacher Winery has come to be known as
7 the Winery with the Grasshopper label and the Wine with the Grasshopper label, or
8 the like.
9
17.
Based on Thacher Winerys extensive and exclusive use of its Grasshopper
10 mark and filing of Application No. 78850669 on March 30, 2006 for its THACHER
11 WINERY and Grasshopper mark on wine labelling with use in commerce at least as early
12 as November 1, 2006, the United States Patent and Trademark Office on October 21, 2008
13 issued to Thacher Winery Registration No. 3522613 for the mark:
14
15
16
17
18 specifying Wine. A photocopy of this referenced Registration is attached as Exhibit A.
19
18.
The specimen of use from the file history of Registration No. 3522613,
20 below, presents the typical trade dress for how Thacher Winery has used and continues to
21 use the Grasshopper mark on bottle labels:
22
23
24
25
26
27
28
5
19.
Beginning with certain 2011 and 2012 vintages of wine, Thacher Winery
2 introduced an updated Grasshopper mark on wine labelling and elsewhere beginning at

3 least as early as June 22, 2013, and based on Thacher Winerys extensive and exclusive
4 use in commerce of its updated Grasshopper mark and filing of Application No. 86238256
5 on April 1, 2014, the United States Patent and Trademark Office on October 28, 2014
6 issued to Thacher Winery Registration No. 4628609 for the mark:
7
8
9
10 specifying Wine. A photocopy of this referenced Registration is attached as Exhibit B.
11
20. The specimen of use from the file history of Registration No. 4628609,
12 below, presents the typical trade dress for how Thacher Winery has used and continues to
13 use the updated Grasshopper mark on bottle labels:
14
15
16
17
18
19
20
21
22
23
24
21.
Thacher Winery has actively and consistently promoted its Grasshopper
25 marks in connection with branded products and services in the United States through sales
26 of wine products and related souvenirs and merchandise, through operating wine tasting
27 onsite and at public events, through advertising, publicity and social media, and through
28 offering and hosting onsite wedding and corporate events. Through its efforts, the Thacher
6
1 Winery has established and is further establishing, substantial goodwill and valuable
2 trademark rights in the Grasshopper mark.
3
22.
Based on Thacher Winerys longstanding use of the Grasshopper marks for
4 wine products and services and ownership of Registration Nos. 3522613 and 4628609 for
5 wine (the marks, the trade dress and the common law rights and statutory rights in the
6 marks are herein comprehensively referred as the Grasshopper marks), the relevant
7 public trading in or purchasing such goods and services, have long ago come to recognize
8 the Grasshopper term, grasshopper image and trade dress as being exclusive source
9 identifiers for Thacher Winery goods and services.
10
23.
The Defendants Sans Liege Inc., The Fableist Wine Company, 22 Hundred
11 Cellars, Inc. d/b/a Field Recordings Winery, Curt Schalchlin, and Andrew Jones all reside
12 and operate their wine related businesses in and around Paso Robles, the same city in
13 California where Thacher Winery established and operates its winery and related
14 business.
15
24.
Long after Thacher Winery established U.S. rights in the Grasshopper marks
16 by use and registration, the Defendants Sans Liege Inc., The Fableist Wine Company, 22
17 Hundred Cellars, Inc., Curt Schalchlin, and Andrew Jones collaborated in the production,
18 sale and distribution of wine having the image of a grasshopper as a source identifying
19 mark (the trade dress and mark are herein comprehensively referred as Defendants
20 mark) prominently displayed on labelling, as displayed below:
21
22
23
24
25
26
25.
On information and belief, the Defendants first sold 2013 vintage wine
27 having the Defendants mark on labelling on or about September 2014.

28
7
26.
On information and belief, since the time that Defendants began using the
2 Defendants mark for wine, the Defendants have promoted the wine in close connection
3 with the term Grasshopper and the image of a grasshopper on wine labels and
4 elsewhere.
5
27.
The Defendants had prior actual knowledge or had reason to know of the
6 Grasshopper marks belonging to Thacher Winery.

7
28.
The Defendants have not received consent from Thacher Winery to sell wine
8 with the Defendants mark.

9
29.
The Defendants mark is indistinguishable from and highly similar to the
10 Thacher Winerys Grasshopper marks.

11
30.
The Defendants have used and are using the Defendants mark to sell wine
12 products in the same markets and channels, including but not limited to the same retail
13 outlets, in which Thacher Winery sells products and services and to sell to the same
14 customers to whom Thacher Winery is selling or attempting to sell.
15
31.
On information and belief, the Defendants have had at all relevant times
16 specific knowledge of the Grasshopper marks belonging to Thacher Winery and despite
17 this specific knowledge, the Defendants introduced wine products and continue to
18 promote, sell and distribute wine products in connection with the Defendants mark in the
19 same markets and channels in which Thacher Winery sells products and services and to
20 sell to the same customers to whom the Plaintiffs are selling or attempting to sell.
21
32.
The Defendants infringement of the Grasshopper marks and trade dress has
22 caused consumers to mistake the Defendants mark as identifying wine originating from
23 or affiliated with Thacher Winery.
24
33.
Defendants infringement of the Grasshopper marks is causing actual
25 confusion in the marketplace, and will continue to cause actual and likely confusion in the
26 marketplace, regarding the source, origin and/or affiliation of the Defendants products
27 with the products and services of Thacher Winery.
28
8
34.
Thacher Winery notified the Defendants that their infringement of the
2 Grasshopper marks is causing actual and likely confusion with the Thacher Winery
3 Grasshopper mark and causing irreparable damage to Thacher Winery.
4
35.
Despite actual notice and reasonable time to cease infringement, the
5 Defendants have continued use of the infringing Defendants mark.

6
36.
All the foregoing acts of the Defendants have caused damage to Thacher
7 Winery, and unless restrained by this Court, will continue to cause, serious and irreparable
8 injury, including, but not limited to, loss of competitive advantage, loss of business
9 reputation and goodwill, loss of sales and profits, and other losses, for which Thacher
10 Winery has no adequate remedy at law.
11
12
COUNT I
13
INFRINGEMENT UNDER LANHAM ACT
14
37.
Thacher Winery incorporates by reference herein paragraph nos. 1-36.
15
38.
Without consent of Thacher Winery, each of the Defendants have used, in
16 connection with the sale, offering for sale, distribution or advertising of the infringing
17 products, a mark that infringes upon the registered marks of Thacher Winery.
18
39.
On information and belief, these acts of infringement have been committed
19 with the intent to cause confusion, mistake or deception, and are in violation of 15 U.S.C.
20 1114.
21
40.
The foregoing acts of the Defendants constitute willful infringement of
22 registered marks in violation of the Lanham Act, 15 U.S.C. 1114.

23
41.
As a direct and proximate result of the infringing activities of each and all of
24 the Defendants, Thacher Winery has suffered substantial damage.

25
26
27
28
9
COUNT II
FALSE DESIGNATION OF ORIGIN UNDER LANHAM ACT
42.
43.
The conduct of each and all Defendants constitutes the use of words, terms,
5 symbols or devices to falsely describe the infringing products, within the meaning of 15
6 U.S.C. 1125(a)(1).
The Defendants conduct has caused and is likely to cause
7 confusion, mistake, or deception by or in the public as to the affiliation, connection,

8 association, origin, sponsorship or approval of the infringing products to the detriment of
9 each and both of the Plaintiffs and in violation of 15 U.S.C. 1125(a)(1).
10
44.
The foregoing acts of the Defendants constitute willful false designation of
11 origin and violation of the Lanham Act, 15 U.S.C. 1125(a).

12
45.
As a direct and proximate result of the infringing activities of each and all of
13 the Defendants, Thacher Winery has suffered substantial damage.

14
15
COUNT III
16
COMMON LAW UNFAIR COMPETITION
17
46.
18
47.
Without consent of Thacher Winery, each and all of the Defendants have
19 used, in connection with the sale, offering for sale, distribution or advertising of the
20 infringing products, marks and trade dress that infringe upon marks and trade dress
21 belonging to and used by Thacher Winery.
22
48.
The foregoing acts of the Defendants constitute willful trademark
23 infringement and unfair competition in violation of the common law of California and/or
24 other States.
25
26
27
28
10
COUNT IV
CALIFORNIA BUSINESS & PROFESSIONS CODE
49.
50.
On information and belief, each and all of the Defendants in the course of
5 their business caused and are causing likelihood of confusion and misunderstanding as to
6 the source of Defendants goods and services.
7
51.
The foregoing acts of the Defendants constitute willful trademark and trade
8 dress infringement and unfair competition in violation of the California Business and
9 Professions Code Section 17200 et seq.
10
11
PRAYER FOR RELIEF
12
WHEREFORE, Thacher Winery prays for the following relief:
13
1)
A preliminary injunction ordering that each of the Defendants, and any of its
14 principals, officers, directors, shareholders, owners, affiliates and subsidiaries, and all
15 others acting in concert or participation with the Defendants, shall not use, directly or
16 indirectly, the Defendants mark, or any other mark that is confusingly similar to the
17 Grasshopper marks;
18
2)
A permanent injunction ordering that each of the Defendants, and any of its
19 principals, officers, directors, shareholders, owners, affiliates and subsidiaries, and all
20 others acting in concert or participation with the Defendants, shall not use, directly or
21 indirectly, the Defendants mark, or any other mark that is confusingly similar to the
22 Grasshopper marks;
23
3)
An award of damages, including prejudgment interest, sustained by Thacher
24 Winery as a result of the wrongful acts of the Defendants;

25
4)
An increase and/or trebling of damages pursuant to 15 U.S.C. 1117, or any
26 other applicable statutory or common law basis;

27
5)
An accounting of any and all profits derived from the wrongful acts of the
28 Defendants;
11
6)
An award of costs and attorney's fees pursuant to 15 U.S.C. 1117 or any
2 other statutory or common law basis; and

3
7)
Such other and further relief as the Court may deem just and proper.
4
5
Respectfully submitted,
Westside Winery LLC and Thacher Winery &

Vineyard, Inc. d/b/a Thacher Winery
7
8
9
Date: March 22, 2016
10
11
12
13
14
15
/s/ Jon A. Birmingham

Jon A. Birmingham
FITCH, EVEN, TABIN & FLANNERY
Los Angeles, CA 91367
Telephone: (818) 715-7025
Facsimile: (818) 715-7033
731342
16
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22
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24
25
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28
12
DEMAND FOR JURY TRIAL
2
3
Plaintiffs hereby request a jury trial on all issues raised in this complaint.
4
5
Respectfully submitted,
Westside Winery LLC and Thacher Winery &

Vineyard, Inc. d/b/a Thacher Winery
7
8
9
10
11
12
13
14
Date: March 22, 2016
/s/ Jon A. Birmingham

Jon A. Birmingham
FITCH, EVEN, TABIN & FLANNERY
Los Angeles, CA 91367
Telephone: (818) 715-7025
Facsimile: (818) 715-7033
15
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Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 1 of 13 Page ID #:1

1 Jon A. Birmingham (CA SBN 271034)

Attorney for Plaintiffs

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTSIDE WINERY LLC AND THACHER

Civil Action No.

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 2 of 13 Page ID #:2

3 Thacher Winery (individually and collectively referred to herein as Thacher Winery),

NATURE OF ACTION, JURISDICTION AND VENUE

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 3 of 13 Page ID #:3

Venue is proper in this district under 28 U.S.C. 1391(b) as Defendants are

Westside Winery LLC, which has done business as Thacher Winery, is a

7 California Limited Liability Company having a principal place of business at 8355

Thacher Winery & Vineyard, Inc. d/b/a Thacher Winery is a California

On information and belief, Sans Liege Inc. is a California corporation having

On information and belief, Curt Schalchlin is an individual residing and

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 4 of 13 Page ID #:4

On information and belief, The Fableist Wine Company, formerly named

On information and belief, The

On information and belief, Andrew Jones is an individual residing and doing

On information and belief, 22 Hundred Cellars, Inc. d/b/a Field Recordings

FACTS COMMON TO ALL COUNTS

Thacher Winery was founded in 2004 in Paso Robles, California.

Thacher Winery began vineyard agriculture operations and producing wines

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 5 of 13 Page ID #:5

2 part of the traditional Thacher family crest.

Based on Thacher Winerys extensive and exclusive use of its Grasshopper

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 6 of 13 Page ID #:6

2 introduced an updated Grasshopper mark on wine labelling and elsewhere beginning at

Thacher Winery has actively and consistently promoted its Grasshopper

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 7 of 13 Page ID #:7

Based on Thacher Winerys longstanding use of the Grasshopper marks for

27 having the Defendants mark on labelling on or about September 2014.

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 8 of 13 Page ID #:8

6 Grasshopper marks belonging to Thacher Winery.

8 with the Defendants mark.

The Defendants mark is indistinguishable from and highly similar to the

10 Thacher Winerys Grasshopper marks.

Defendants infringement of the Grasshopper marks is causing actual

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 9 of 13 Page ID #:9

Thacher Winery notified the Defendants that their infringement of the

Despite actual notice and reasonable time to cease infringement, the

5 Defendants have continued use of the infringing Defendants mark.

INFRINGEMENT UNDER LANHAM ACT

Thacher Winery incorporates by reference herein paragraph nos. 1-36.

Without consent of Thacher Winery, each of the Defendants have used, in

On information and belief, these acts of infringement have been committed

The foregoing acts of the Defendants constitute willful infringement of

22 registered marks in violation of the Lanham Act, 15 U.S.C. 1114.

24 the Defendants, Thacher Winery has suffered substantial damage.

Case 2:16-cv-01959-DSF-SS Document 1 Filed 03/22/16 Page 10 of 13 Page ID #:10

FALSE DESIGNATION OF ORIGIN UNDER LANHAM ACT

Thacher Winery incorporates by reference herein paragraph nos. 1-41.

The Defendants conduct has caused and is likely to cause

7 confusion, mistake, or deception by or in the public as to the affiliation, connection,

The foregoing acts of the Defendants constitute willful false designation of

11 origin and violation of the Lanham Act, 15 U.S.C. 1125(a).

13 the Defendants, Thacher Winery has suffered substantial damage.

COMMON LAW UNFAIR COMPETITION

Thacher Winery incorporates by reference herein paragraph nos. 1-45.

The foregoing acts of the Defendants constitute willful trademark