Lara Vineyard, a vineyard located in San Antonio, Texas, is currently feeling the [grapes of] wrath from San Antonio Winery, a vineyard located in Los Angeles, California. On January 19, 2016, San Antonio Winery filed a trademark-infringement suit against Lara Vineyard for its use of the words “San Antonio” on the label of some of its wines, such as their “Blanco Dulce de San Antonio.” They claim that Lara’s use of the words satisfies the “likelihood of confusion” prong of the Lanham Act, the federal statute controlling trademarks in the United States.

Even though Lara received approval for its labels from the federal Alcohol and Tobacco Tax and Trade Bureau, they have voluntarily made changes in hopes that San Antonio will move to dismiss the lawsuit. Lara’s owner, Michael Lara, states, “I’ll go ahead and change anywhere it says ‘San Antonio.’ I’ll make sure it’s San Antonio comma Texas. All of my labels will read that.” As of yet, it seems as though San Antonio is not satisfied with this change and will continue to move forward.

This lawsuit poses an interesting legal question: Does using a geographic location on a product label constitute trademark infringement? Lara argues that it does not because it would constitute fair use. The law is mostly settled on this point and appears to be on Lara’s side. In Two Pesos, Inc. v. Taco Cabana, Inc., the United States Supreme Court held that “Marks, which are merely descriptive of a product…do not inherently identify a particular source, and hence cannot be protected. However, descriptive marks may acquire the distinctiveness which will allow them to be protected under the [Lanham] Act…This acquired distinctiveness is generally called ‘secondary meaning.’” If the lawsuit goes forward, its outcome will turn on whether or not the words “San Antonio” have acquired a secondary meaning.

One possible resolution would be the adoption of a law or regulation treating wine similar to how international intellectual property law treats champagne. Under the appellation d’origine contrôlée or “controlled designation of origin” regulation, only sparkling wines made in the Champagne region of France can be coined “champagne.” It seems unjust not to allow a winery that is actually located in the city of San Antonio, Texas to include its geographic location on its bottles of wine. Here’s to hoping the court will reach an equitable resolution. Cheers!

Jennifer Blasco

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