Brewers, distillers, and vintners are no strangers to themed seasonal offerings, so it’s not surprising that Halloween brings out some decidedly decrepit monikers. From PUMPKINHEAD (think reaping) to NOSFERATU, WITCH’S WIT to BRUJERIA, purveyors of alcohol capitalize on the creepy and market the macabre. Every once in a while, of course, great minds think alike, and so it is we were blessed with not one, but two HALLOWINE brand wines.
The Terrifying Trademark Opposition
Door Peninsula Winery, a Wisconsin winery, sells a popular spiced apple wine it calls HALLOWINE. It launched the label in Wisconsin back in 1998, and expanded its operations into Illinois the same year. Perhaps unable to resist a good seasonal pun, in 2005 an Illinois winery called Illinois River Winery launched its own HALLOWINE spiced apple wine. Soon after, Illinois River Winery filed a federal application to register HALLOWINE, which was opposed by Door Peninsula based on its prior common law rights to the HALLOWINE mark. (Prior to filing the opposition, Door Peninsula filed its own HALLOWINE application.) In October 2008 the Board, unsurprisingly unmoved by Illinois River’s argument that the relevant consumers were “sophisticated,” sustained Door Peninsula’s motion for summary judgment based on the identical marks, goods, customers, and channels of trade, and registration was refused.
The Creepy Civil Action
Undeterred, Illinois River continued to sell its competing HALLOWINE spiced apple wine, and in March 2012 Door Peninsula filed suit against Illinois River and its owner, Gregory Kane, in the District Court for the Eastern District of Wisconsin, alleging a violation of its still-unregistered trademark rights under Section 43(a) of the Lanham Act. (Door Peninsula’s own HALLOWINE application was withdrawn after an opposition by E. & J. Gallo Winery based on its many GALLO marks.) In addition to denying the infringement claim, Illinois River asserted 27 separate affirmative defenses, including laches, estoppel, and failure to mitigate.
In short order, the district court dismissed the affirmative defenses, granted Door Peninsula’s Motion for Summary Judgment, and found Illinois River liable for over $500,000 [link to SJ order] — the amount of Illinois River’s infringing sales. It also roundly chastised Illinois River for procedural sloppiness.
The Last Word
Illinois River and Gregory Kane, ever the optimists, appealed to United States Court of Appeals for the Seventh Circuit, arguing that the district court’s decision was defective because (a) Gregory Kane cannot be liable in his individual capacity, (b) certain damages are barred by the applicable statute of limitations, and (c) HALLOWINE is not, in fact, a protectable mark. In a short opinion issued June 24, 2014, the Seventh Circuit dismissed all three claims because they were not raised in the case below and were therefore waived.
While Illinois River’s HALLOWINE spiced wine now longer appears on the Illinois River Winery website, it is still available at some online retailers. If you’re keen to compare the merits of the competing HALLOWINE wines, you’d best do so quickly.