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  • R. Scott Kimsey

Would You Confuse Jamieson Ranch Vineyards With Jameson Irish Whiskey?

When Madison Vineyard branded their "Jamieson Ranch Vineyard" in 2013, they might have foreseen the possibility of drawing the attention of the makers of Jameson Irish Whiskey. After all, they are both selling alcoholic beverages (though different ones), and Jamieson/Jameson are the commercially dominant portions of the mark. Jameson Irish Whiskey is very well known.

Whether they anticipated it or not, they received a cease and desist letter from the makers of Jameson Irish Whiskey earlier this year. This led to a series of events that have now culminated in the makers of Jameson Irish Whiskey filing a trademark infringement suit against the winery.

This is a good opportunity to say something about trademark infringement, and why you should vett any trademark you want to use prior to adopting it.

The key issue in trademark infringement is "likelihood of confusion." In other words, are consumers likely to be confused into thinking that the Jamieson Ranch Vineyard wines somehow originate from, or are associated with, the makers of Jameson Irish Whiskey?

There are a few things to consider here: 1) the marks themselves; 2) the nature of the goods on which the marks are used; 3) the environment in which sale of the goods take place; and 4) the fame of the prior trademark. Let's take a look at how a typical trademark analysis might go in the context of this case.

With respect to the marks themselves, the words Jamieson and Jameson are arguably dominant. They are spelled differently, by one letter, but pronounced the same. When you look at the marks as a whole, though, there are certainly differences, and one might argue that the overall commercial impression between the two is distinct.

The goods themselves are related, but not identical. They're both in the category of alcoholic beverages, but wine and whiskey are two different things, and the consumers of each may be more sophisticated with respect to these products than, say, someone buying a bag of chips. A consumer might conclude that Jameson Irish Whiskey has expanded into wines, but given the differences in the marks as a whole, would a consumer really think these products were made by the same company, or that the wine is associated with the whiskey maker?

The sale of the wine and whiskey certainly occurs in the same environment, at least some of the time - liquor stores or grocery stores, with the products on the shelf in relative close proximity.

Jameson Irish Whiskey is a well-known mark, probably not only among whiskey connoisseurs, but among a large portion of the general public. Whether or not it is famous is beyond the scope of this blog post, but if it is, that gives the whiskey makers additional ammunition.

The analysis above provides the sorts of things you want to think about when choosing a trademark. You might read this blog post and decide there's no problem, and that no one is likely to be confused between the wine and the whiskey. You may be right about that, but there is one other thing to consider: now that a lawsuit has been filed, it could be very expensive for the winery to get out of this. If they fight, and take it all the way through trial, the cost could be measured in the hundreds of thousands of dollars.

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