Trademark Dispute Pits Wine Maker Against State Government

On behalf of Peter C. Bronstein of The Law Office of Peter C. Bronstein posted in Intellectual Property on Friday, November 18, 2016.

The business courts of California have their fair share of intellectual property disputes. These may concern issues over copyright infringement, a trademark dispute, patent infringement, trade secrets or other related matters. An unusual trademark battle is occurring in another state right now, and it may go down to the wire before it is settled or decided by way of a jury trial.

A winery produced a wine that is called “What Exit Wine,” which borrows from the idea of the state’s exit signs that appear on the state turnpike that runs the length of the state. It designed the logo to look just like the actual exit signs that appear on the turnpike. When contacted by the state agency, the business asserted that it had a right to use the design as its logo despite that the state already had obtained a trademark to it.

The winery and the New Jersey Turnpike Authority have been going back and forth on the dispute for the past year. The small winery brought the matter to a determination by filing a declaratory judgment action against the state agency. Such an action requests the court to issue an order declaring essentially the legal rights and responsibilities of the parties.

The court will decide whether the winery has a right to design a logo that borrows themes and designs already incorporated into the highway exit sign. The business explains that it was using the theme to raise congenial talk among the state’s citizens. Presumably, they will talk cordially about their respective highway exit locations.

The plaintiff in this trademark dispute has argued to the court that the U.S. Patent and Trademark Office should not have approved the state’s application for a trademark for its road signs. It argues that the state turnpike laws prohibit the authority from engaging in an activity that has commercial and business undertones. It is difficult to say how the courts in California would decide a similar dispute, and it will be interesting to see how the courts decide to resolve this matter.