| OCTOBER 26, 2011 -- In one of the most important trademark infringement cases that the National Grange has faced, the National Grange and Queensway Winery of Los Angeles, Calif., have resolved a longstanding trademark dispute before the U.S. Patent and Trademark Office Board of Appeal over Queenway’s registration and intended use of the name LA GRANJA (Spanish for the Grange) for use as the name of a wine.
Queensway Winery has agreed to assign and sell the rights to its LA GRANJA trademark for wine to the National Grange. The Grange will, in turn, license Queensway to use the LA GRANJA trademark on its wines.
Under U.S. Trademark law, foreign language equivalent words that are easily recognized in English are protected against infringement.
The National Grange has successfully addressed several attempts to use the Spanish word GRANJA or LA GRANJA as either a business or product name in an attempt to circumvent our intellectual property rights. In fact, two other wineries have also branded a variety of their wine as a GRANJA or LA GRANJA wine.
The dispute with Queensway was long and difficult.
Queensway was initially determined to own the trademark for LA GRANJA wine despite the National Grange’s existing trademark.
In addition to arguing that the Spanish language name LA GRANJA would not be confusing with its English counterpart, Queensway also argued that the National Grange, which officially is a “dry” organization which prohibits the consumption or sale of alcoholic beverages at its meetings and functions, had not demonstrated any commercial association with the production, marketing, selling or promotion of wine or wine products.
Since the National Grange was not involved in selling or promoting wine under its trademark, Queensway argued to the U.S. Trademark Office that they could hold the trademark for LA GRANJA wine without infringing on any existing use of the National Grange’s trademark.
In response to Queensway’s allegation that the National Grange had no commercial association with wine or wine promotion, the National Grange put out an appeal to its 2,700 local, county and state Grange chapters across the nation for examples of how local Granges support and promote local agricultural enterprises that produce wine.
Dozens of local Grange chapters across the country responded with extensive testimony and photographs demonstrating how the Grange supports local wine production without violating the prohibition on the direct sale or consumption of wine at Grange events.
These examples included sponsoring local farmers markets where local wine producers could market their products, sponsoring local farm tours and winery tours where Grange members and members of the public could receive tours of local wineries in order to learn about modern wine production, sponsoring wine judging events at county fairs where local wines could be judged and evaluated, before a public audience, on their quality, sponsoring raffles and fundraising events that featured unopened bottles of wine from local wineries as part of the prize package.
These examples demonstrated that the National Grange and its local chapters have been actively using the trademark GRANGE at the local level to promote local viniculture businesses without actively promoting or selling wine to its individual members and guests.
When Queensway was presented with this evidence and our resolve to continue to fight their trademark registration of the term LA GRANJA, a complicated set of negotiations ensued.
Queensway completely refused to abandon its quest to brand its wine as LA GRANJA, citing their on-going investments in promotion and marketing of that name. However, Queensway did concede that full ownership of trademark LA GRANJA for wine was not necessary for its business plan to proceed.
Both parties recognized that it was better to finalize the trademark registration that Queensway had started rather than abandon the registration because another company, such as either of the two other wineries that have been selling LA GRANJA branded wine, could quickly step in and restart registration proceedings for the trademark LA GRANJA for wine, a legal situation that neither party wanted to face.
Therefore, in a legal twist to resolve the dispute, the National Grange agreed to withdraw its opposition to Queensway’s registration of the trademark LA GRANJA for wine. Once Queensway received its trademark for LA GRANJA wine, it agreed to transfer that trademark to the National Grange in exchange for a long term license to produce wine under the brand name LA GRANJA.
With the National Grange securely in legal control of the trademark for LA GRANJA wine, the remaining two infringement cases involving LA GRANJA wines should resolve themselves quickly because neither of these two wineries actually filed to register their LA GRANJA wine varieties as trademarks.
National Grange Master Ed Luttrell commented on the resolution of this complicated and longstanding trademark infringement case.
“The Queensway infringement case was the second most expensive trademark case that the National Grange has fought in the past four years,” Luttrell said. “Only our battle with Tyson Foods has cost us more in member resources. As in the Tyson Food case the tremendous response of our Grange Chapters and Grange leaders to provide us with real world examples of how they are actively involved in promoting local wine businesses in their communities was critical to our legal victory. Resolution of this case will clearly help us to accurately budget for our trademark protection expenses here on out.”
“The resolution of this case, which allows Queensway to market its wine under the LA GRANJA brand name, under a license from the National Grange, does not change the Grange’s long standing policy against encouraging the use of alcohol,” Luttrell said. “Our ownership of the trademark LA GRANJA, in fact, strengthens our legal rights to restrict the use of our trademark for future commercial alcohol sales that many of our members might find questionable or offensive.”
ROAD TO RESOLUTION
In order to resolve the case between Queensway and the National Grange, the Grange agreed to withdraw its opposition to Queensway’s registration of the trademark LA GRANJA for wine. However, upon Queensway’s receipt of a trademark for LA GRANJA wine, it agreed to transfer that trademark to the National Grange in exchange for a long-term license to produce wine under the brand name LA GRANJA.
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