907 F. Supp. 2d 1042
N.D. Cal.2012Background
- Plaintiffs Stark Wine, Stark Wine LLC, and Stay @ Home Sommelier, LLC allege multiple trademark claims against Diageo over Diageo's Stark Raving wine.
- Plaintiffs claim Stark Raving conflicts with Stark Wine® and Stark Thirst™, including federal and state trademark and unfair competition theories.
- Diageo launched Stark Raving™ in 2012; Stark Raving is marketed at mass retailers and through a multi-channel distribution network.
- Stark Wine® is incontestable after five years of use; Stark Thirst™ has pending registration and limited interstate use in NYC area.
- Court conducts Sleekcraft likelihood-of-confusion analysis and, after balancing equities, grants injunction only in Sonoma County.
- injunction is conditioned on a $500 bond; nationwide injunction denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity and ownership of Stark Wine® | Stark Wine® is incontestable and used in commerce. | Questions remain about actual use and registrability; challenged as potentially descriptive. | Stark Wine® ownership likely valid; incontestability supported. |
| Likelihood of confusion between Stark Raving™ and Stark Wine® | Sound and meaning of Stark Raving™ closely resemble Stark Wine® and Stark Thirst™. | Differences in labels, channels, and strength negate confusion. | Overall likelihood of confusion not proven for general market; limited to Sonoma County. |
| Likelihood of confusion between Stark Raving™ and Stark Thirst™ | Stark Raving™ and Stark Thirst™ are similar in sound/appearance and target same consumer base. | Labels and brand positioning differ; channels not overlapping. | Confusion more likely between Stark Raving™ and Stark Thirst™ than with Stark Wine®. |
| Whether preliminary relief should be granted | Irreparable harm due to goodwill damage without injunction. | Injury to Diageo would be significant and relabeling possible; balance favors non-infringement. | Injunction granted in Sonoma County; not nationwide. |
| Geographic scope of injunction | Nationwide injunction needed to prevent confusion. | Local harm supports limited relief; nationwide unnecessary. | Restrictive injunction limited to Sonoma County. |
Key Cases Cited
- Winter v. Natural Resources Defense Council, 555 U.S. 7 (U.S. Supreme Court 2008) (establishment of four-factor test for preliminary injunctions)
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (sliding-scale approach to likelihood of confusion factors)
- Sleekcraft Boats, Inc. v. Galaxy, 599 F.2d 341 (9th Cir. 1979) (eight-factor test for likelihood of confusion)
- Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) (likelihood of confusion hinges on mark similarity and marketplace context)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (U.S. Supreme Court 1985) (incontestability framework and mark validity principles)
- Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (9th Cir. 1992) (degree of care by purchasers and related factors in confusion analysis)
- Goss v. Airline Guides, Inc., 6 F.3d 1385 (9th Cir. 1993) (intent and likelihood of deception considerations in infringement)
- Adidas Am., Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007) (market-channel considerations in confusion analysis)