Florida based wine importer, Palm Bay International Inc., has filed a lawsuit against Italian wine producer, Citra, over the trademarks “Sheep Thrills” and “Niro.” In the complaint, filed February 20, 2018, Plaintiff’s Palm Bay allege that Defendant Citra has wrongfully claimed ownership of its “Sheep Thrills” and “Niro” trademarks and that Palm Bay’s ownership of the marks is “clouded” by Citra’s continued usage. Citra maintains that it owns the two trademarks at issue by virtue of a contract entered into with Palm Bay. In 1991, Palm Bay and Citra entered into an agreement that provided Palm Bay with exclusive rights to import Citra brand wine and other Citra brand products in exchange for Palm Bay achieving defined annual sales obligations. According to the complaint, the parties “enjoyed a long and mutually beneficial business relationship” pursuant to the contract until October 2017, when Citra served Palm Bay with a purported Notice of Termination of the contract, effective April 30, 2018. In 2010, Palm Bay filed COLA applications in its own name seeking label approval for the “Niro” brand and in 2015 for the “Sheep Thrills” brand, both of which were approved by the TTB. According to the complaint, Palm Bay also claims to have created and financed all marketing and promotional materials for the “Sheep Thrills” and “Niro” brands in an effort to build brand awareness. Plaintiff, Palm Wine, a related entity to Palm Bay, owns the U.S. Federal Trademark “Sheep Thrills”  for use in connection with wines which was issued in November…

The Trademark Trial and Appeal Board (TTAB) has ruled that a Ternura brand of cigars is confusingly similar to Ternura tequila, dubbing the two types of product as “complementary” and linked in the minds of consumers, according to Law360. The board affirmed a decision to refuse registration of “Ternura” as a trademark for cigars, citing an existing registration for tequila held by a California company called Don Francisco Spirits LLC. The board reasoned that because alcohol and tobacco are commonly sold by the same entity and they are complementary products marketed together for simultaneous consumption with identical trademarks, the marks were confusingly similar. “Whiskey and cigars are closely related in distribution and use,” the Fifth Circuit wrote. “Hotels, restaurants and bars supply cigars as well as whiskey to their guests and customers. People frequently smoke cigars while drinking whiskey.” The boards ruling signals a broadening of the channels of trade and streams of commerce one must evaluate in determining the strength of a trademark.  The case is:  In re El Galan Inc., case number 86961428, in the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board.

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