“Where the offense is, let the great axe fall.” — Claudius in Hamlet.
Here’s a recent situation where a family-owned business failed to do some due diligence, chose to adopt their family name as their brand name and trademark, and in the end created an offense that brought down the axe — a story of two wineries in “The Blair Family vs. The Blair Family.”
The Blair family, and their company Blair Vineyards, LLC, run a vineyard and winery in Kutztown, Pennsylvania. The family first planted their vines in 1998 and opened their winery in 2004. Among the various wines that they produce is a Pinot Noir under their BLAIR trademark. The family promotes their wines on Facebook and on their website at blairvineyards.com.
On the other side of the country in Monterey County, there is another, completely unrelated Blair family-run winery — Blair Vineyards, LLC in Salinas, California. According to that company’s BlairWines.com website, founder Jeffrey Blair began planting Pinot Noir vines on the family ranch in 2007, as well as Chardonnay and Pinot Gris vines. The family company sells their Pinot Noir under the BLAIR ESTATE brand.
On first blush, it would appear that Blair Vineyard-CA’s first production of Pinot Noir and first-use under the BLAIR ESTATES mark was subsequent to Blair Vineyards-PA’s first use in 2004 of their BLAIR mark. However, Blair Vineyards-CA owns a federal registration for the BLAIR ESTATE trademark for wines, registered in 2006. That registration indicates August 20, 2001, as the trademark’s date of first use. Initially, this information would not seem to jibe with Jeffrey Blair first planting his vines in 2007.
It turns out that Jeffrey Blair and his family had the good fortune to acquire the BLAIR ESTATE brand from Christopher and Kristi Johnson, who had been doing business as Blair Estates Winery. It was the Johnsons who, in 2003, had filed the trademark application to register and then obtained the registration for the BLAIR ESTATE mark. Christopher Johnson passed away in 2009. Title to the vineyard property and the BLAIR ESTATE trademark passed to his wife Kristi, who then sold the brand and trademark to Blair Vineyards-CA in 2012. By acquiring the BLAIR ESTATE trademark and registration, Blair Vineyards-CA also acquired the earlier priority date of 2001, therefore pre-dating the first use in 2004 of Blair Vineyards-PA.
In June 2017, Blair Vineyards-CA sued Blair Vineyards-PA for trademark infringement, in Blair Vineyards, LLC v Blair Vineyards, LLC, U.S. District Court, Eastern District of Pennsylvania, Case No. 17-cv-2471. It is likely that defendant Blair Vineyards-PA entered into a settlement with plaintiff Blair Vineyards-CA because the latter voluntarily dismissed the lawsuit a mere seven weeks after the case was filed. Rather than fight out the litigation, it seems clear that defendant Blair Vineyards-PA opted to completely rebrand themselves. The company is now doing business under the name SETTER RIDGE VINEYARDS, and with a corresponding new logo.
While they avoided the massive expense of defending a trademark lawsuit, the Pennsylvania Blairs nonetheless had to have suffered damage to their business. It is one thing when a company drops or changes a trademark on one of its products. While such a change may temporarily hurt that particular product line, the company’s commercial identity and overall branding remain otherwise intact. It is quite another thing for a company to have to change its entire company brand and house trademark to something utterly different, which amounts to a complete and radical change to its very commercial identity. That means, after 13 years of business, the Pennsylvania Blairs have to rebuild their company brand and commercial presence from the ground up.
A little due diligence would have saved the Pennsylvania Blairs a lot of grief. Since they did not adopt the BLAIR mark for their wines until 2004, a quick check of the USPTO Trademark Registry would have readily revealed the California company’s BLAIR ESTATE trademark application already filed since 2003 (with its August 2001 priority date). Also, it appears that the Pennsylvania Blairs still have not learned their lesson about protecting trademarks. As of this writing, they have not filed a US trademark application to register their new SETTER RIDGE VINEYARDS brand and logo. Here’s to hoping, for their sake, that they did their proper due diligence this time.