The right name can make all the difference. But sometimes, the right name is still the wrong name.
This is the unfortunate lesson that seems to be learned, over and over again, by entrepreneurs bringing out new products with names that infringe (or at least appear to infringe) on existing trademarks. Occasionally, that infringement is the subject of international intrigue. Other times, the infringement allegations feel a bit unfair – like when you get sued for making a product and trying to market it under your own name.
This is the lesson learned this past week by winemaker and former NFL quarterback Vince Ferragamo. While Mr. Ferragamo previously made his living throwing passes for the Los Angeles Rams, he’s now under heavy pressure by Salvatore Ferragamo SpA, the Italian fashion house with extensive trademarks on the “Ferragamo” name.
It seems Mr. Ferragamo has been producing wine (a sangiovese/cabernet blend) since 2010, and has been marketing it under the name Tenuta di Ferragamo. Unfortunately for Mr. Ferragamo, however, the venerable Italian brand that introduced the world to the stiletto heel has held a trademark on the use of “Ferragamo” in connection with wine (and alcoholic beverages generally) since at least 2006.
In the lawsuit, Ferragamo SpA v Ferragamo Winery et. al., which was filed in the U.S. District Court for the Southern District of New York, the fashion house seeks an injunction against further trademark infringement, damages associated with the alleged illegal profits from the sale of the wine, as well as the destruction of any and all remaining wine bearing the infringing name.
Ferragamo SpA alleges that the name of Mr. Ferragamo’s product may be confusing to customers. Before you discount that allegation, consider the fact that Mr. Ferragamo’s website and bottle art suggest – at least obliquely – connections with Italy (and particularly the region of Tuscany) that obscure somewhat the fact that the wine is produced in Orange County, California.
So will Mr. Ferragamo find the end zone, or will the fashion house sack the former quarterback? Since Ferragamo SpA has a federal registration covering the mark, it is entitled to legal presumptions that the mark is valid and that they have an exclusive right to use it in connection with the sale of wine. While those presumptions can be rebutted (and Mr. Ferragamo is undoubtedly a fairly sympathetic defendant given that he will almost certainly claim he simply intended to use his own name to market his wine), I suspect the smart money is on the fashion house prevailing. If nothing else, this seems likely given the relative financial strength of the parties and their ability to fund litigation.
But even if the litigation settles (which also seems likely), it should be noted that Mr. Ferragamo could have avoided this entire episode by running a simple trademark search. Feels like a bit of a fumble, doesn’t it?
Interesting…would the same thing apply to authors?
You don’t typically get trademark protection for poetry or prose, but copyright does apply. And you can indeed register a copyright, giving you quite strong rights to seek damages from anyone who infringes on the work.