Caymus Vineyard Sues Caymus Builders Because It Built Some Buildings For Its Wine Business

from the not-how-it-works dept

Look, trademark law can be confusing. If you're not spending some significant portion of your life either practicing trademark law or writing about trademark law, you might misunderstand how it works. In particular, the requirement for entities to be in the same business or market often times trips people up, with them either not realizing that this provision exists for there to be trademark infringement in most cases, or else not understanding exactly what it means to be competing in the same marketplace.

But my understanding and generosity in this is heavily strained when a winery sues a construction company just because the winery built stuff on its property.

According to a filing in San Francisco’s U.S. District Court, dated March 2, Sonoma’s Caymus Capital is being sued, along with other related parties, by Caymus Vineyards of Napa.

The suit cites the defendants’ “unauthorized and unlawful use of Plaintiff’s famous, incontestable federal trademark registration for the mark ‘Caymus’ and Plaintiff’s corporate and trade name ‘Caymus Vineyards.’”

By way of background, Caymus Capital is related to Caymus Builders, Caymus Residential Recovery, and other related businesses, all of which are also named in Caymus Vinedyards' lawsuit. To be clear, none of these companies are in the wine business. All of them are in the building and construction business. Readers of this site will already be scratching their heads wondering what argument the winery might be making in order to assert that any of this is trademark infringement.

Well, there are two arguments in the lawsuit, both of which are equally flimsy. First, as part of its wine business, Caymus Vineyards asserts in its filing that it builds stuff.

The suit explains that Caymus Vineyards has engaged in building projects on its own properties, primarily in the Napa Valley, and is currently developing a winery, bottling and distribution complex in Solano, where it does business as Caymus-Suisun.

None of which makes it a builder or construction company in the commercial marketplace. Were this to equate to trademark infringement, construction companies would likely have to go unnamed entirely, because every industry has to build stuff to be an industry.

In the complaint itself, Caymus Vineyards also complains that Caymus Builders, which is located in nearby Sonoma, tried to help with the recovery efforts from last year's devastating wildfires that rocked Wine Country.

Since that time, Defendant Caymus Builders LLC has advertised its services along the Napa-Sonoma corridor, presumably as part of the re-building process. … The highly visible signage advertising Defendant’s goods and services alongside vineyard properties will likely cause confusion, mistake, or deception as to the source, affiliation, sponsorship or authenticity of Defendant’s goods and services.

Say it with me now: none of this makes Caymus Vineyard a builder, nor does it make Caymus Builders a winery. All of this complaining is silly, as are claims that anyone is going to confuse the quite famous Caymus Vineyards winery with a construction company.

Hopefully the court will see clear to putting the cork back in this disaster of a trademark suit.


Reader Comments

Subscribe: RSS

View by: Time | Thread


  • icon
    Anonymous Anonymous Coward (profile), 19 Apr 2018 @ 6:35pm

    More lawyers looking for billable hours, or what?

    Didn't Caymus Vineyards have to list the market segments in which they would be using their trademark in the trademark application? Don't they have to be doing business in those market segments to get their trademark application approved? Don't lawyers, who deal in trademark law, actually have to understand this?

    I tried looking up the trademark application, but the USPTO database returned some information, but not which market segments they are registered for. Maybe someone with more experience with that monstrosity can find it.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 19 Apr 2018 @ 9:01pm

      Re: More lawyers looking for billable hours, or what?

      Yeah, a trademark filing has to contain the products for which they are registering for. A lot of time filers tend to list everything under the sun for TM coverage on the off chance they might move into that product sector later on.

      I looked up "Caymus" (no vineyard). And they only have a mark for wine. That's all, which means they probably don't have a leg to stand on outside of any product other than wine. Obviously their lawyer should have told them their mark doesn't cover anything but the product its registered for. Apparently either they didn't do so, doesn't know much about trademark law, or the client insisted.

      To find out what products a mark is registered for click on the "TSDR" button on the upper left and it'll give the details on the actual registration. You then go to goods and services and it'll do a drop down for what it's meant to protect.

      I also looked up Caymus for the holding company and both of those marks, "Caymus Homes" and "Caymus Real Estate LLC" are abandoned, which means they are no longer be protected under TM law, I think.

      reply to this | link to this | view in chronology ]

    • identicon
      cpt kangarooski, 20 Apr 2018 @ 7:43am

      Re: More lawyers looking for billable hours, or what?

      CAYMUS is registration 1833996. International Class 033 (alcoholic beverages except beers), US class 047 (Wines) and the specific goods the mark applies to are just: Wine.

      Seems pretty straightforward.

      reply to this | link to this | view in chronology ]

  • identicon
    ryuugami, 19 Apr 2018 @ 8:12pm

    The opposite day at the Caymus Vineyard

    Hmm, by their logic, any business with the word "window" or "apple" in one of their trademarks that also owns a computer can sue Microsoft or Apple for trademark infringement.

    ...

    I see no downsides here!

    reply to this | link to this | view in chronology ]

  • icon
    Mononymous Tim (profile), 19 Apr 2018 @ 8:49pm

    The judge should call the vineyard's number and ask them to build him a garage, then tell them case dismissed when they refuse, then ding them for treating everyone like a moron.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 19 Apr 2018 @ 9:52pm

    Uniqueness?

    I fully admit ignorance of trademark law but shouldn't the uniqueness / originality of the name play into the decision as well? If there was a well known winery called YtrewqPoiu Winery and I was to open a construction company called YtrewqPoiu Construction down the road I think a trademark lawsuit should be expected and reasonable even if I'm in a different business because customers could easily be confused into thinking the construction business is a diversification / subsidiary of the winery. An originality argument may not apply in this case since they appear to have lifted their name from a former settlement.

    reply to this | link to this | view in chronology ]

    • icon
      Vidiot (profile), 20 Apr 2018 @ 5:56am

      Re: Uniqueness?

      I believe the response is this: What is it about the ability to bottle nicely-balanced Pinot Noir that would make you say, "Now that's the kind of construction company I need to build my new garage." Customer confusion, the ultimate arbiter, generally requires both entities to play in the same space.

      reply to this | link to this | view in chronology ]

    • identicon
      cpt kangarooski, 20 Apr 2018 @ 6:12am

      Re: Uniqueness?

      > I fully admit ignorance of trademark law but shouldn't the uniqueness / originality of the name play into the decision as well? If there was a well known winery called YtrewqPoiu Winery and I was to open a construction company called YtrewqPoiu Construction down the road I think a trademark lawsuit should be expected and reasonable even if I'm in a different business because customers could easily be confused into thinking the construction business is a diversification / subsidiary of the winery.

      Not enough to carry all of the weight. There is a laundry list of factors that go into whether there is confusion: 1) Strength of the mark on the scale of generic to arbitrary/fanciful; 2) Relatedness of products; 3) Similarity of marks; 4) Evidence of actual confusion; 5) Similarity of marketing channels used; 6) Care of consumers in distinguishing between them; 7) Intent of the defendant in selecting the similar mark; and 8) Likelihood of expansion of businesses to cause confusion in the future.

      You’re basically saying a win on factors 1 & 3 should inherently produce a win on 6, and a win overall even if the defendant wins on factors 2, 4 & 8 and 5 & 7 are neutral.

      Or you’re saying that trademark dilution (eg why you can’t make COCA-COLA brand foot fungus ointment, even though there is no infringement) should exist in the absence of fame, and dilution is already bad enough, so your proposal would really make things nuts.

      Trademark is a strongly use-it-or-lose-it field, and if the winery doesn’t do construction under the same mark (there’s nothing that says good wine like ‘we also erect buildings and other structures’) then it’s not using the mark in that capacity and gets no rights.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 20 Apr 2018 @ 12:10am

    Smells like...

    This smells a lot like either an attempt to retaliate or an attempt to cop out of payment.

    I guess we'll see...

    reply to this | link to this | view in chronology ]

  • icon
    Richard (profile), 20 Apr 2018 @ 3:22am

    Misunderstanding

    Look, trademark law can be confusing. If you're not spending some significant portion of your life either practicing trademark law or writing about trademark law, you might misunderstand how it works.

    No actually you only need to remember one thing. The purpose of Trademark law is to protect the consumer not the Trademark holder.

    Everything else follows from that.

    reply to this | link to this | view in chronology ]

  • icon
    David (profile), 20 Apr 2018 @ 4:48am

    Not only should the case be thrown out. The winery should have to pay the legal fees of the construction company. This case shows the merit of the UK's "looser pays" system.

    reply to this | link to this | view in chronology ]

  • identicon
    Altaree, 20 Apr 2018 @ 4:51am

    Caymus is a historical name in the area.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 20 Apr 2018 @ 5:24am

    Ah, Caymus, We'll Miss You

    I'd 'a' thunk a shop that aspires to hold the clientele Caymus does would know better than to sully its brand's reputation with tawdry foolishness of this sort.

    Caymus makes a wonderful Cabernet Sauvignon. I'll now have forego that vintage and cry in my Silver Oak, since googling "silver oak trademark disputes" returns tons of results with "trademark disputes" elided.

    reply to this | link to this | view in chronology ]

  • identicon
    cpt kangarooski, 20 Apr 2018 @ 6:17am

    Infringement can cross international classes, however

    In particular, the requirement for entities to be in the same business or market often times trips people up

    Yes, but it is broader sometimes than it appears. I had a case recently where an applicafion for a bar in one international class had to be abandoned because it conflicted with a prior mark for a brand of wine in a separate class. The examiner felt that people might think the wine was the bar’s house label, but in fact there was no relationship.

    I feel it could be beaten with adequate and expensive survey evidence, but the client didn’t want to wait years and pay big bucks to get to the Federal Circuit which would be the first real opportunity for success in challenging the refusal.

    reply to this | link to this | view in chronology ]

  • identicon
    I.T. Guy, 20 Apr 2018 @ 6:57am

    "Hopefully the court will see clear to putting the cork back in this disaster of a trademark suit."

    Tim's got Dad jokes.
    yeah, I chuckled a little.

    You would think a responsible lawyer... oh never mind. I would have just charged the consult fee and sent the Whinery on their way.

    reply to this | link to this | view in chronology ]

  • icon
    Oblate (profile), 20 Apr 2018 @ 7:19am

    Market overlap/confusion

    All of them are in the building and construction business. Readers of this site will already be scratching their heads wondering what argument the winery might be making in order to assert that any of this is trademark infringement.

    Caymus Vinyard is building themselves a bad reputation. Hence the confusion with other construction businesses.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 20 Apr 2018 @ 12:40pm

    I looked up Caymus and in the wiki it states that Caymus was the name of a group of Indians. I thought I head that you cant get a trademark on a name like that. I wonder if someone could invalidate the Caymus trademark?

    https://en.wikipedia.org/wiki/Rancho_Caymus

    reply to this | link to this | view in chronology ]

    • identicon
      carlb, 21 Apr 2018 @ 10:21am

      Re: a group of Indians?

      No, you can't call native Americans "Indians" any more. The India Ink Company has a trademark on the word "India" and will consider legal action against you if you do not cease and desist by some arbitrary deadline which I just made up.

      reply to this | link to this | view in chronology ]


Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Use markdown for basic formatting. HTML is no longer supported.
  Save me a cookie
Follow Techdirt
Techdirt Gear
Shop Now: Copying Is Not Theft
Advertisement
Report this ad  |  Hide Techdirt ads
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Chat
Advertisement
Report this ad  |  Hide Techdirt ads
Recent Stories
Advertisement
Report this ad  |  Hide Techdirt ads

Close

Email This

This feature is only available to registered users. Register or sign in to use it.