imprinted with the word "Banfi." (Tr. 438:24-25, 439:25-440:3.)
Lastly, with respect to the sophistication of wine consumers, studies,
like the one published by The U.S. Wine Market Impact Databank Review and
Forecast, have indicated that wine drinkers tend to be older, wealthier,
and better educated than the average population. (Pl.'s Ex. 88.)
Specifically, wine consumers "60 and over account for some 28% of all wine
volume, while those between 50 and 59 consumer another 22 percent."
(Pl.'s Ex. 88 at 311.) In addition, "[t]he wine consumer is generally an
affluent one — more than forty-one percent have incomes of at least
$60,000." (Id. at 312.) Finally, survey results indicate that "[a]t least
half of the drinkers for all the wine types (with the exception of
Sangria) have some college education. . . ." (Id. at 313.)
Conclusions of Law
In order to prevail on its claim of trademark infringement under
15 U.S.C. § 1114 or false designation of origin under
15 U.S.C. § 1125 (a), Kendall-Jackson, as counterclaimant, must show
that there is a likelihood of confusion. See, e.g., Estee Lauder Inc. v.
The Gap, 108 F.3d 1503, 1508 (2d Cir. 1997). Thus, Kendall-Jackson must
show that "numerous ordinar[il]ly prudent purchasers are likely to be
misled or confused as to the source of the product in question because of
the entrance in the marketplace of [Banfi]'s mark." Estee Lauder Inc. v.
The Gap, Inc., 108 F.3d at 1510 (quoting Gruner Jahr USA Publishing v.
Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993)). The Second Circuit
has stated that to establish a likelihood of confusion, it is not
sufficient if confusion is merely possible; rather, likelihood of
confusion requires that there be a probability of confusion. See id.
In evaluating whether Kendall-Jackson has established likelihood of
confusion, this Court must consider several factors set forth in Polaroid
Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961). Those
factors are: (1) the strength of the mark of the party alleging
infringement; (2) the degree of similarity between the two marks; (3) the
proximity of the products; (4) the likelihood that the party alleging
infringement will "bridge the gap;" (5) actual confusion; (6) the alleged
infringer's good faith in adopting the mark; (7) the quality of the
alleged infringer's product; and (8) the sophistication of the buyers.
See, e.g., Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743 (2d
Cir. 1998); Estee Lauder v. The Gap, Inc., 108 F.3d at 1510; Arrow
Fastener v. Stanley Works, 59 F.3d 384, 391 (2d Cir. 1995).
These factors are not exhaustive, however, nor is any one dispositive
of the question of likelihood of confusion. See Estee Lauder v. The Gap,
Inc., 108 F.3d at 1510 (citation omitted). Instead, "the proper approach
is to weigh each factor in the context of the others to determine if, on
balance, a likelihood of confusion exists." Conopco, Inc. v. Cosmair,
Inc., 49 F. Supp.2d 242, 248 (S.D.N.Y. 1999) (quoting W.W.W.
Pharmaceutical Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir.
1. Strength of Kendall-Jackson's Mark
It is well settled that the strength of a mark refers to "the
distinctiveness, or more precisely, its tendency to identify the goods
sold under the mark as emanating from a particular, although possibly
anonymous source." McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126,
1130 (2d Cir. 1979) (citation omitted). A mark's strength is measured by
considering two factors: "its inherent distinctiveness, and its
distinctiveness in the marketplace." Streetwise v. Vandam, Inc., 159 F.3d
at 743-44 (citing W.W.W. Pharmaceutical Co., Inc. v. Gillette Co., 984
F.2d at 572).
To gauge the inherent distinctiveness of a particular mark, courts
classify the mark in one of four categories in increasing order of
distinctiveness: generic, descriptive, suggestive, and
Streetwise v. Vandam, Inc., 159 F.3d at 744. As the Second Circuit
[t]he strongest marks are arbitrary or fanciful
marks, which are entitled to the fullest protection
against infringement. The next strongest are
suggestive marks, which require "imagination, thought
and perception to reach a conclusion as to the nature
of goods." A mark that is merely descriptive of its
product is entitled to somewhat less protection.
Time, Inc. v. Petersen Publishing Co. L.L.C., 173 F.3d 113, 118 (2d Cir.
1999) (citations omitted).
In the instant case, as Kendall-Jackson argues and Banfi more or less
concedes, ROBERT PEPI COLLINE DI SASSI is an arbitrary mark because it
has no meaning to the average consumer, nor does it suggest the qualities
and features of the wine. See Lexington Management v. Lexington Capital
Partners, 10 F. Supp.2d 271, 280 (S.D.N.Y. 1998). However, a finding that
a particular mark is arbitrary does not guarantee a determination that
the mark is strong. See Mondo v. Sirco Int'l Corp., No. 97 Civ. 3121,
1998 WL 849401, at *6 (S.D.N.Y. Dec. 7, 1998). Instead, this Court still
must evaluate the mark's distinctiveness in the marketplace. See id.
Courts may consider several factors in determining a particular mark's
distinctiveness in the marketplace. For example, the "strength of a mark
is [ ] often ascertained by looking at the extent of advertising invested
in it, and by the volume of sales of the product." Nina Ricci, S.A.R.L.
v. Gemcraft Ltd., 612 F. Supp. 1520, 1527 (S.D.N.Y. 1985) (citing
Beneficial Corp. v. Beneficial Capital Corp., 529 F. Supp. 445,
(S.D.N.Y. 1982)). In addition, "extensive third-party use can dilute the
strength of a mark." Lexington Management v. Lexington Capital Partners,
10 F. Supp.2d at 281.
Here, ROBERT PEPI COLLINE DI SASSI is not particularly distinctive in
the marketplace. In the first instance, Kendall-Jackson's advertising
expenditures for ROBERT PEPI COLLINE DI SASSI over the last several years
have been minimal. Kendall-Jackson's distribution of its wine also has
been limited in scale. Furthermore, numerous vinters have used variations
of the words "Colline" and "Sassi" in their respective marks.
Accordingly, this first Polaroid factor weighs in favor of Banfi.
2. The Degree of Similarity Between the Two Marks
In determining whether the two marks are similar, and therefore likely
to cause consumer confusion, courts should evaluate "`the overall
impression created by the logos and the context in which they are found
and consider the totality of factors that could cause confusion among
prospective purchasers.'" Streetwise Maps, Inc. v. Vandam Inc., 159 F.3d
at 744 (quoting Gruner Jahr USA Publishing v. Meredith Corp., 991 F.2d
at 1078). In doing so, courts may consider "the products' sizes, logos,
typefaces and package designs, among other factors." See Mondo, Inc. v.
Sirco Intern. Corp., 1998 WL 849401, at 7 (citing W.W.W. Pharmaceutical
Co., Inc. v. Gillette Co., 984 F.2d at 573).
In the case at bar, the two marks are quite dissimilar. Banfi's mark,
COL-DI-SASSO, is composed of three words, separated by hyphens, whereas
Kendall-Jackson s ROBERT PEPI COLLINE DI SASSI is composed of five words
with no hyphens. There are also phonetic differences between the two
marks, to wit, the "Col" element of Banfi's COL-DI-SASSO has one
syllable, while the "Colline" element of Kendall-Jackson's mark has three
syllables and is pronounced "Col-eene."*fn4 See Buitoni Foods Corp. v.
Gio. Buton, 680 F.2d 290, 292 (2d Cir. 1982) (noting
that differences in the pronunciation between the marks at issue rendered
the degree of similarity insubstantial). In addition, the English
translations of the two marks differ in that COL-DI-SASSO means "hill of
stone," and ROBERT PEPI COLLINE DI SASSI translates into "Robert Pepi
little hills of stone."
There are also several key distinctions between the products themselves
and the overall impression created by the marks that would prevent
consumer confusion. For instance, Banfi's front label includes an
orange-yellow depiction of a landscape with a black marbleized
background. The Banfi wine's front label features the COL-DI-SASSO name,
along with the words "Sangiovese" and "Cabernet." Additionally, the word
"Banfi" appears on the side of the front label in gold script and on the
cork in black script. Banfi's back label features the legends "Produce of
Italy," "Red Table Wine of Italy" and "Banfi Vinters."
By contrast, the front label of ROBERT PEPI COLLINE DI SASSI contains
neither a depiction nor a marbleized background. Rather, the cream and
orange label features the words "Robert Pepi" in the top left corner,
with "Colline Di Sassi" and "Napa Valley Sangiovese" in the center. The
back label plainly states that the wine is both produced and bottled in
Napa Valley, California. Based on the foregoing, this factor also weighs
in Banfi's favor.
3. The Proximity of the Products
Under this Polaroid factor, courts must assess whether the two products
at issue compete with each other in the same market. See Streetwise
Maps, Inc. v. Vandam, Inc., 159 F.3d at 745 (citing Lang v. Retirement
Living Publishing Co., Inc., 949 F.2d 576, 581 (2d Cir. 1991)). In doing
so, courts should evaluate "the nature of the products themselves, as
well as the structure of the relevant market." E.S. Originals Inc. v.
Stride Rite Corp., 656 F. Supp. 484, 488 (S.D.N.Y. 1987) (citing Vitarroz
Corp. v. Borden, Inc., 644 F.2d 960, 967 (2d Cir. 1981)). Differences in
price between the two products also should be considered in measuring
product proximity. See, e.g., Mondo, Inc. v. Sirco Intern. Corp., 1998 WL
849401, at * 8; E.S. Originals Inc. v. Stride Rite Corp., 656 F. Supp. at
Taking these criteria in turn, this Court concludes that the products
in this case differ in ways that may be deemed material to consumers.
First, Banfi's COL-DI-SASSO is a 50-50 blend of Sangiovese and Cabernet.
On the other hand, ROBERT PEPI COLLINE DI SASSI is both labeled and
marketed solely as a Sangiovese, even though it contains a small
percentage of Cabernet. Additionally, COL-DI-SASSO is marketed as an
affordable, everyday red wine, and as such is sold to distributors, who
in turn market the wine to discount drug stores, supermarkets, and
midrange Italian restaurant chains. ROBERT PEPI COLLINE DI SASSI,
marketed as a high-end, special occasion wine, is sold exclusively in
fine restaurants and retail wine stores. In fact, Kendall-Jackson
submitted no evidence to suggest that the two wines at issue were ever
sold in the same location, be it restaurant or retail store.
Additionally, Banfi's COL-DI-SASSO is sold for $8 to $10 per bottle in
stores, and $16 to $23 per bottle in restaurants. Conversely, ROBERT PEPI
COLLINE DI SASSI is sold for double this price, i.e., $20 to $25 in
stores, and $35 to $45 in restaurants. Banfi's wine is often sold by the
glass in restaurants as a promotional tool, whereas Kendall-Jackson's is
rarely, if ever, sold by the glass. Accordingly, this factor is of little
help to Kendall-Jackson's claim that there is a likelihood of confusion.
4. The Likelihood That the Party Alleging Infringement Will "Bridge the
This factor considers whether Kendall-Jackson will enter Banfi's
Arrow Fastener Co. v. Stanley Works, 59 F.3d at 397 (citing Lang v.
Retirement Living Publishing Co., Inc., 949 F.2d at 582). Here,
Kendall-Jackson has presented no evidence to suggest that it intends to
produce a 50-50 blend of Sangiovese and Cabernet, produce and bottle a
wine in Italy, or reduce the price of ROBERT PEPI COLLINE DI SASSI to
match that of Banfi's COL-DI-SASSO. This factor, then, favors Banfi.
5. Actual Confusion
In the instant matter, Kendall-Jackson stipulated to the absence of
actual confusion between the two products. of equal significance,
however, is the fact that Kendall-Jackson was ignorant of Banfi's use of
the COL-DI-SASSO mark until 1994 when this dispute arose. This
co-existence further buttresses this Court's finding that not only is
there no actual confusion, but no likelihood of confusion as well. See
McGregor-Doniger; Inc. to Drizzle Inc., 599 F.2d at 1136, n. 6.
6. The Alleged Infringer's Good Faith in Adopting the Mark
This factor considers "whether the alleged infringer] adopted its mark
with the intention of capitalizing on [the opposing party's] reputation
and goodwill and any confusion between his and the senior user's
product." See Arrow Fastener Co. v. Stanley Works, 59 F.3d at 397 (quoting
Lang v. Retirement Living Publishing Co., Inc., 949 F.2d at 583). One
indication of a party's good faith is "the selection of a mark that
"reflects the product's characteristics.'" Ivoclar-North America, Inc.
v. Dentsply Intern., Inc., 41 F. Supp.2d 274, 282 (S.D.N.Y. 1998)
(quoting W.W.W Pharmaceutical Co., Inc. v. Gillette Co., 984 F.2d at
Here, Banfi demonstrated that it conceived its mark at approximately
the same time that Kendall-Jackson adopted its own mark, albeit in Italy
as opposed to Napa Valley, California. Moreover, Banfi selected the
COL-DI-SASSO name because the wine was produced in Tuscany, a region in
which sasso rock is prevalent. Conversely, Pepi adopted its ROBERT PEPI
COLLINE DI SASSI mark at a family meal, without any relation to "little
hills of stone." Banfi also adopted the COL-DI-SASSO mark without ever
having heard of ROBERT PEPI COLLINE DI SASSI. Furthermore, Banfi showed
its continuing good faith by initiating this instant action, seeking
resolution of both party's rights to the marks at issue. Accordingly,
this factor weighs against a finding of likelihood of confusion.*fn5
7. The Quality of the Alleged Infringer's Mark
Courts consistently have concluded that this factor primarily is
concerned with "whether the senior user's reputation could be jeopardized
by virtue of the fact that the junior user's product is of inferior
quality." Arrow Fastener Co. v. Stanley Works, 59 F.3d at 398 (citations
omitted). In the case at bar, the evidence establishes that Banfi's
COL-DI-SASSO is not of lesser quality than ROBERT PEPI COLLINE DI SASSI.
On the contrary, since it was first introduced in the United States,
COL-DI-SASSO has received favorable reviews from many critics. Thus, this
factor favors Banfi.
8. The Sophistication of the Buyers
This final Polaroid factor considers "the general impression of the
ordinary consumer, buying under normal market conditions and giving the
attention such purchasers usually give in purchasing the product at
issue." Streetwise Maps, Inc. v. Van dam, Inc., 159 F.3d at 746 (citing
W.W.W. Pharmaceutical Co., Inc. v. Gillette Co., 984 F.2d at 575). In
this case, the only evidence relevant to this factor suggests that wine
purchasers are likely to be older, wealthier, and better educated than the
general population. Because Kendall-Jackson submitted no evidence to
contradict these findings, this factor weighs in Banfi's favor.
9. Balancing the Polaroid Factors
In sum, all eight Polaroid factors favor Banfi, albeit in varying
degrees. Consequently, there is no likelihood that consumers will confuse
Banfi's COL-DI-SASSO with Kendall-Jackson's ROBERT PEPI COLLINE DI
10. Banfi's Federal Trademark Registration
With respect to Kendall-Jackson's claim seeking to cancel Banfi's
federal trademark registration for COL-DI-SASSO, it is well settled that
a party's failure to show likelihood of confusion, "fatal to the merits
of his claim for infringement, is equally fatal to his claim of
invalidation and cancellation of [his opponent's] registered mark."
Berliner v. Recordcraft Sales Corp., No. 81 Civ. 4358, 1987 WL 5805, at
*9 (S.D.N.Y. Jan. 15, 1987), aff'd, 857 F.2d 1461 (2d Cir. 1987). In the
instant case, this Court has already concluded that Kendall-Jackson has
not sustained its burden of proving likelihood of confusion between
ROBERT PEPI COLLINE DI SASSI and COL-DI-SASSO. Thus, Kendall-Jackson
lacks standing to seek cancellation of Banfi's federal trademark
registration. See id.
This Court has examined Kendall-Jackson s remaining claims and finds
that they are without merit. Accordingly, for the reasons stated herein,
this Court concludes that there is no likelihood of confusion between the
two marks at issue, and directs the Clerk of the Court to enter judgment
of non-infringement. In view of this conclusion, this Court dismisses as
meritless both parties remaining claims.