Apple Hill Growers v. El Dorado Orchards, Inc.
2:17-cv-02085
| E.D. Cal. | Jul 8, 2025Background
- Plaintiff Apple Hill Growers (AHG) is an association of farms and wineries in El Dorado County, California, that owns federal trademark registrations for "APPLE HILL."
- El Dorado Orchards (EDO), operating as Boa Vista Orchards and initially a founding member of AHG, was expelled from AHG in 2014 due to trademark disputes.
- EDO and the Vismans (officers of EDO) continued to use the term "Apple Hill" on products and in connection with websites after termination from AHG.
- AHG sued EDO and the Vismans for trademark infringement, cybersquatting, and unfair competition under federal and California law.
- Both sides filed motions for summary judgment. Defendants also counterclaimed, seeking cancellation of AHG’s trademarks for alleged naked licensing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of APPLE HILL Mark | Mark is protectable, not primarily geographic; decades of exclusive use and promo made it distinctive | Term is now geographically descriptive due to public association with region; no secondary meaning | Genuine dispute on secondary meaning; not resolved at summary judgment. |
| Likelihood of Confusion | Defendants’ use of “Apple Hill” likely misleads consumers | Marks used to fairly describe geographic origin; no consumer confusion | Genuine issue of fact; summary judgment denied for both sides. |
| Cybersquatting | Mason Visman’s use of "applehillca.com" was to divert traffic and profit, showing bad faith | Acted in good faith, promoted the area, had pending trademark application, no attempt to sell domain | No evidence of bad faith; summary judgment granted for defendant. |
| Naked Licensing/Abandonment | Relied on long-term relationships, informal quality control among members | AHG lacked sufficient quality control over mark use by members | Genuine dispute of fact on quality control; summary judgment denied. |
| Individual Liability of Kandi Visman | Officer status sufficient for liability | No direct involvement in infringing acts | No evidence of direct involvement; summary judgment for Kandi Visman. |
Key Cases Cited
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (burdens in summary judgment)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (distinctiveness categories for trademarks)
- Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (trademark validity burden)
- Barcamerica Int’l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (naked licensing/abandonment doctrine)
- FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (trademark abandonment via naked licensing)
- New Kids on the Block v. NewsAmerica Pub., Inc., 971 F.2d 302 (nominative fair use)
- Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (infringement standard)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (likelihood of confusion test)