Saw an article today that said that Constellation won their case against Vineyard House over the use of the To Kalon Trademark.
The article was posted on Bloomberg Law and unfortunately my Bloomberg Business subscription there doesn’t get access to the full article.
Are there any attorneys on the board that might be able to access the full article and either post it here or PM it to me?
Thanks!
-Alex
Bummer! I’ve been hoping to be able to ride on the coat tails and finally get ToKalon on my bottles of wine!
Don’t have the article but the court’s decision is available here:
Crap! I was hoping the faults from the original trademark filing by Mondavi (and Constellation’s tactics) would have lead to a different ruling. I’ll be reading the court’s ruling over the next day or two. The whole AVA system is based on sense of place and localized conditions - therefore the name of a vineyard should not be subject to a trademark.
Does anyone know if the To Kalon history developed by Graeme MacDonald made it into evidence?
Constellation Beats Winery In ‘To Kalon’ TM Fight
By Andrew Karpan
Law360 (January 27, 2021, 8:28 PM EST) – After a seven-day virtual bench trial, a California federal judge rejected a small California winery’s efforts to stop Constellation Brands from using the “To Kalon” brand name in reference to a 19th-century vineyard and ruled instead that the beverage giant owns the trademark.
U.S. District Judge Yvonne Gonzalez Rogers concluded Tuesday that the historical record was too fuzzy to determine if Oakville-based The Vineyard House LLC could properly trace its lineage to a brand made famous by California wine pioneer Henry Walker Crabb and granted Constellation an injunction preventing Vineyard House from using the To Kalon mark, which the Constellation-owned Robert Mondavi Winery registered in 1988.
“To Kalon,” Judge Rodgers wrote, was “defined by the Greeks as ‘Highest Good’ or the ‘Highest Beauty,’” but “like much in nature, ‘To Kalon’ has transformed with time.”
The full trial involved a review of no fewer than 600 exhibits, the judge noted, and a rich history that could not be entirely appreciated “without traveling back to the 1880s.”
“Despite this change, one conclusion is certain: The Vineyard House cannot use the term in any way, shape, or form,” Judge Rodgers ruled.
In 2019, The Vineyard House filed suit, claiming that a winery it owned sat on land owned by Crabb, who started selling wine under the brand name To Kalon in 1886, but the output stopped with Crabb’s death in 1899.
In 1988, California winemaker Robert Mondavi registered a trademark with the U.S. Patent and Trademark Office for a brand of wines the company still makes called To Kalon. Mondavi told a USPTO examiner that “prior to the turn of the 20th Century, there was a winery in the Napa Valley which used the name ‘Tokalon,’” but since the name was discontinued, it was up for grabs.
After grabbing it, however, Mondavi began advertising the name’s connection to Crabb’s historical accomplishments and claimed the wine had come from the very land Crabb’s winery was on, according to the decision. Judge Rodgers admitted that the record bore this out to be a total fiction.
“A review of the actual deed transfers indisputably demonstrates that Mr. Mondavi’s story was not true. As noted, one can reasonably presume that he created the story to heighten the stature of To Kalon,” she wrote.
On Mondavi’s website, the winery, which Constellation purchased in 2004 for $1.4 billion, currently advertises the To Kalon Exclusive line as the product of “a vineyard with a distinguished history and a magical nature.”
But the judge found that The Vineyard House wasn’t able to prove that Mondavi had also lied to the USPTO when he claimed the brand had been discontinued. It was Mondavi’s story about the vineyard, created to sell wine from another vineyard, that created the widespread awareness of Crabb’s To Kalon brand, Judge Rodgers found.
“That [Robert Mondavi Winery], and now Constellation, use the term as both a brand and a reference to all of their alluvial fields in [Oakville] does not weaken the mark. Rather, it is the combined effect that has strengthened the mark,” Judge Rodgers added.
As it turned out, the land The Vineyard House owned had no deeper connection to Crabb’s legacy. In the complaint, the vineyard claimed ownership of 17 acres of vineyard that could be traced back to Crabb’s brand, but Judge Rodgers didn’t buy that claim.
“[The Vineyard House’s] hired historian manipulated a sentence in a historic report to conclude incredulously that such a vineyard was not only possible, but likely,” Judge Rodgers wrote. “At most, one might surmise that the parcel contained a source of water which he piped to the valley.”
Representatives for both parties did not respond Wednesday to a request for comment.
The Vineyard House is represented by Peter H. Bales, David Aaron Goldstein, Jeffrey Michael Judd, Michael L. Meeks, Christina Le Trinh, Daniel Jacob Zarchy, Glenn Philip Zwang and Farah Parveen Bhatti of Buchalter Law Firm.
Constellation Brands is represented by Timothy John Carlstedt, Edward T. Colbert, Erik C. Kane, William M. Merone and Armin Ghiam of Hunton Andrews Kurth LLP.
The case is The Vineyard House LLC v. Constellation Brands U.S. Operations Inc., case number 4:19-cv-01424, in the U.S. District Court for the Northern District of California.
–Editing by Breda Lund.
Call it “No-Kalon” (just kidding, not a lawyer, this will probably get you sued).
Three-Kalon.
That’s a gem.
How about some Reddit guys do something good for a change, and hammer Constellation?
As I read the opinion it seems that under the Fair Use rule a winery could have rights to a trademark (To Kalon in this case) if they are located in a geographical place with that name. The judge here writes, “In some circumstances, however, a junior user can use another’s registered trademark so long as it is in a non-trademark, geographical sense. . . 15 U.S.C. § 1115(b)(4) allows a fair use for trademarks that describe the geographic origin of a junior trademark user’s product.”
The judge goes on to write, “the Court does not find that the historical record supports TVH’s claim that Mr. Crabb grew wine grapes on the Baldridge Parcel.” My understanding is that the judges’s statement is true. Crabb never grew grapes on the land where the Vineyard House is located and that land was never known to be part of To Kalon.
But the ruling implies to me that if it could be proven that that land was part of the original To Kalon historically and / or is on land that has a geographic name associated with To Kalon the judge may have ruled in their favor.
So perhaps this could be considered good news for folks like the Macdonald’s or Deterts or others sourcing grapes from areas that were truly part of the historic To Kalon vineyard. It also shows why Constellation was so eager to push the Macdonald’s to get rid of the To Kalon creek designation, as that geographic name could give them the right to use the To Kalon name under the Fair Use rule.
I should caveat all of this by saying I’m not a lawyer so this is just my interpretation as a lay person. I’d be curious if any lawyers can weigh in and confirm if they have the same interpretation.
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My understanding was the reason Graeme turned it down was because in exchange for using the To Kalon name Constellation asked Graeme and Alex support reversing the decision they had just gotten approved to name the creek running through the property To Kalon creek. Constellation must think that having that creek with the name To Kalon opens the door for others with property along it to use the name. Based on how I read the ruling in this case they are probably right.
I bet if someone like the Macdonalds or Deterts with vineyards that are legitimately within the historic bounds of To Kalon slapped it on their label they would win a case, but they’d have to probably pay tons in legal fees to fight Constellation to win that.
Hi Jared,
Do you happen to work for Constellation?
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Jared,
Graeme turned it down because your attorney’s were requiring him to petition the government to reverse his earlier request to name To Kalon Creek. He refused to sell out to you and he should be applauded.
It is very troubling that you work for two of the parties involved in the lawsuit, yet you never disclosed this in either your comments or your signature.
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Jared,
I have received no Private Messages from you whatsoever as of this moment. (Let’s have Todd French check the logs and confirm.)
Now let’s break down your question. You work for two entities who are parties in this lawsuit. The two parties who your work for, stand to benefit from the results of said lawsuit and the conflict with Graeme.
You then post a comment “Constellation actually offered to freely license the To Kalon trademark toMacdonald. Graeme turned it down.” which 100% misrepresents what happened to Graeme during his negotiations with your employer. All the while, you fail to mention your conflict of interests in this situation. That’s what’s “disturbing.”
Deleted.
I’ve read the ruling and I sense the following…
Vineyard House lost and complete injunctive relied was given to Mondavi. Big win for Constellation.
There are some very interesting statements in the ruling that leave room for Graeme (and others), in my opinion.
Below the judge is essentially saying ToKalon is a valid trademark but whether it should be is another matter.
Page 12…
Constellation owns a valid, protectable trademark in the term To Kalon. Whether it should be cancelled is a separate and distinct inquiry.
The following could be used as evidence that it is not just a trademark but ALSO a place. And that MacD is within that place.
Page 8…
The Court acknowledges that Mr. Beckstoffer credibly testified that when the USPTO asked Robert Mondavi whether the name To Kalon had any historic or current meaning, and Mr. Mondavi claimed it did not, that Mr. Beckstoffer reasonably believed that Mr. Mondavi knew that he was misrepresenting the truth. (TT, Vol 2, p. 249: 5-7.) “[E]verybody – anybody you talked to in the Napa Valley in those days would – would recall and would state that To Kalon was a vineyard, a famous vineyard owned by Hamilton Crabb.”
Words by Robert Mondavi himself attesting to it being a place, in the ruling. Notice that the name ToKalon was associated with that vineyard before Robert Mondavi bought it, and he knew that at the time and that Mondavi himself called it a “place.”
There was one, though, that stood head and shoulders above the others. It was a vineyard with a distinguished history and a magical name, To Kalon. I had first encountered To Kalon during one of our early expansion phases at Krug. We needed more grapes to boost production, and were looking for a good vineyard to buy or lease. Old Louis M. Martini, Sr., one of the most knowledgeable and hardheaded vintners in the Napa Valley urged me to take a look at the To Kalon Vineyard in Oakville. “Bob,” he said, “that darn place at To Kalon is one of the finest places in California for Cabernet Sauvignon.” I went to see To Kalon, and Louis was right. It was a fine property producing first-rate grapes.
I find it interesting that some of the evidence used by Constellation is actually from Graeme in his research and appears in his own claims for the legitimacy of the creek name. ![[snort.gif]](/uploads/db3686/original/2X/b/bdc3944606213c4dca6c1169cf0a166c8bc4f8c9.gif "snort.gif"){kind=small}
Finally, I remember seeing in person Mondavi use to put row tags on the rows they picked from MacDonald for use in their Reserve and in the specific ToKalon bottling. Those tags were written “Horton ToKalon.” Horton being the grandparents name that Mondavi refers to the property as (MacDonald is the name of the wine from it.)
One more thing…an additional reason the family did not settle is not just the Creek per se, but because Mondavi/Constellation requires in a settlement the family admit that ToKalon is not a place and only a brand. Given the family knew they were part of the original ToKalon long before Mondavi applied for their trademark and that their own grapes constituted a large portion of their ToKalon Mondavi bottling since, it’s a philosophical issue for them.
My own personal fear is that Constellation has said in legal documents that they reserve the right to brand wines from other AVAs, other counties and even other countries as ToKalon! This should strike fear into all wine lovers for it would reduce the name to nothing. And if Constellation looks at ToKalon purely as a name to be exploited for case-growth purposes, my fear is ToKalon eventually becomes the next Woodbridge.
Just some random thoughts.
In 1965 Robert Mondavi split from his family. This split was a result of a number of issues, one of which was reputedly a fur coat for Robert’s then wife. Regardless, Mondavi separated from the Family’s winery, Charles Krug, and he opened his own winery, and his first release was the 1966 Mondavi Cabernet which was made from purchased grapes.
Shortly after Mondavi separated from his family, he engaged in a long drawn out legal battle with his family over his share of the family business. This legal battle ran about 10 years, and Mondavi eventually prevailed in about 1975. The outcome was a monetary judgement in Mondavi’s favor that the family could not afford to pay. Mondavi then shrewdly agreed to settle the debt the family owed him in exchange for the family handing over ownership of their entire To Kalon vineyard holdings. I believe this took place in 1977, and the first vintage that Mondavi produced from these grapes was the 1978 Mondavi Reserve.
About a year ago, I was fortunate enough to acquire a 6L of 1978 Mondavi Reserve, still in the wooden box. I finally was able to open the box late last year, and inside I found a pamphlet from the winery, which I have posted below:
What astounded me was the fact that this pamphlet from the winery, very clearly references the Historic To Kalon Vineyards and goes on to say, “Most of these fine grapes…came from our To-Kalon Vineyars near our winery in Oakville…These Historic vineyards were named To-Kalon (Greek for highest beauty) in 1886 by Henry Crabb, an early California Winemaker. The micro-climate of this area helps develop the Cabernet Sauvignon grapes’ optimum varietal character…”
So, we all know that the To Kalon Trademark was applied for and granted in or around 1988, and in this application, as Roy Piper points out, Mondavi clearly attested to the fact that there was no historical association or connotation to the phrase “To Kalon”. Yet, this pamphlet which was most likely written in or around 1980, 8 years before the trademark application, seems to clearly indicate that the folks at Mondavi, were well aware of the historical nature and history, in addition to the geographic significance of the To Kalon vineyard.
I will leave it others to further interpret, but it seems to me that Mondavi may not have been entirely truthful in their trademark application.