San Antonino Wine Trademark Complaint PDF

Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 1 of 12 Page ID #:1
1 Jeffrey G. Sheldon (SBN 67516)

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jsheldon@leechtishman.com
Ivan M. Posey (SBN 196386)
iposey@leechtishman.com
Katherine M. Bond (SBN 263020)
kbond@leechtishman.com
LEECH TISHMAN FUSCALDO & LAMPL
100 East Corson Street, Third Floor
Pasadena, California 91103-3842
Telephone: (626) 796-4000
Facsimile: (626) 795-6321
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Attorneys for Plaintiff

SAN ANTONIO WINERY, INC.
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
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)
)
)
)
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Plaintiff,
)
v.
)
)
UVE Enterprises, Inc., a California )
)
Corporation dba Tenuta SantAntonio )
USA; Tenuta SantAntonio, Armando )
)
Castagnedi, Massimo Castagnedi,
)
Paolo Castagnedi, Tiziano Castagnedi, )
an Italian Partnership; and Chambers )
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& Chambers Inc, a California
)
)
Corporation and DOES 1-10,
)
inclusive,
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)
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Defendants.
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)
)
)
SAN ANTONIO WINERY, INC., a
California corporation,
Case No.
COMPLAINT FOR DAMAGES
AND INJUNCTION:
1. TRADEMARK INFRINGEMENT
2. FALSE DESIGNATION OF
ORIGIN
3. COMMON LAW TRADEMARK
INFRINGEMENT
4. COMMON LAW UNFAIR
COMPETITION
5. CANCELLATION OF
REGISTRATION
REQUEST FOR JURY TRIAL
26
27
28
COMPLAINT FOR DAMAGES AND INJUNCTION
Plaintiff San Antonio Winery, Inc., through its attorneys Leech Tishman
2 Fuscaldo Lampl, alleges as follows:

3
4
THE PARTIES
1.
Plaintiff San Antonio Winery, Inc. (Plaintiff or San Antonio) is a
5 corporation duly organized and existing under the laws of the State of California and
6 has its principal place of business within the City and County of Los Angeles in the
7 State of California.
8
2.
On information and belief, Defendant UVE Enterprises, Inc. (UVE) is
9 a California Corporation and on information and belief is or was doing business as

10 Tenuta SantAntonio USA in Napa, California.
11
3.
Upon information and belief Defendant Tenuta SantAntonio, Armando
12 Castagnedi, Massimo Castagnedi, Paolo Castagnedi, Tiziano Castagnedi, (Tenuta)

13 is an Italian partnership located at San Zeno Via Ceriani, 23 Colognola Ai Colli (VR)
14 Italy 37030, and the members of the partnership are Armando Castagnedi, Paolo
15 Castagnedi and Tiziano Castagnedi, all citizens of Italy.
16
4.
Upon information and belief Defendant Chambers & Chambers Inc.
17 (Chambers) is a California corporation having a place of business in San

18 Francisco, California.
19
5.
True names and capacities of Defendants sued herein as DOES 1
20 through 10, inclusive, are unknown to Plaintiff and therefore Plaintiff sues these
21 Defendants by these fictitious names. Plaintiff will amend this complaint to allege
22 their true names and capacities when ascertained.
23
6.
Plaintiff is informed and believes and thereon alleges that each of the
24 fictitiously named Defendants are responsible in some manner for the occurrences
25 herein alleged, and that Plaintiffs damages as herein alleged were proximately
26 caused by those Defendants.
27
7.
Plaintiff is informed and believes and on that basis alleges that at all
28 times mentioned in this Complaint UVE, Tenuta, Chambers and Does 1-10
-1COMPLAINT FOR DAMAGES AND INJUNCTION
1 (collectively, the Defendants) were the agents, servants and employees of their Co2 Defendants, and in doing the things set forth in this Complaint were acting within the
3 scope of their authority as such agents, servants and employees, and with the
4 permission and consent of their Co-Defendants. Moreover, Plaintiff is informed and
5 believes, and on that basis alleges, that each Defendant ratified the acts of his/her/its
6 Co-Defendants, as more particularly alleged in this Complaint.
7
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JURISDICTION AND VENUE

8.
The Court has original jurisdiction over this action under 15 U.S.C.
9 1121 and 28 U.S.C. 1331 and 1338(a) in that this case arises under the trademark
10 laws of the United States, 15 U.S.C. 1051, et seq, including 15 U.S.C. 1119.
11 This Court also has original jurisdiction over this action under 15 U.S.C. 1338(b) in
12 that it asserts a claim for unfair competition that is joined with a substantial and
13 related trademark claim.
This Court has supplemental jurisdiction over the non-
14 federal claims set forth herein under 28 U.S.C. 1367 in that those claims are so
15 related to the federal claims that they form part of the same case or controversy.
16
9.
This Court has personal jurisdiction over Tenuta because, on
17 information and belief, Tenuta regularly engages in business and derives substantial
18 revenue from goods sold and used in California. On information and belief, Tenuta
19 has exported, distributed, sold and marketed the wine products at issue herein to
20 distributors in California, including to UVE and Chambers. Wine bearing the name
21 of Defendant Tenuta is available for purchase on the web sites of Chambers and
22 UVE (doing business as Dalla Terra Winery Direct), and wine exported by Tenuta
23 states on the label Imported by: Tenuta SantAntonio USA Napa CA.
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SAN ANTONIO AND ITS TRADEMARKS

10.
San Antonio is a family owned corporation that is engaged in, among
26 other things, the production, sale and nationwide distribution of wines. It has been in
27 business since 1933 and, over the years, its wines have won numerous wine
28 competition awards.
11.
San Antonio is the owner of several well-known trademarks, including
2 but not limited to, the word mark SAN ANTONIO (the SAN ANTONIO Word
3 Mark) and a combination mark and design consisting of the words SAN ANTONIO
4 in stylized format (the SAN ANTONIO Design Mark). San Antonio commenced
5 using the SAN ANTONIO Word Mark and the SAN ANTONIO Design Mark in
6 commerce in the United States at least as early as October of 1933 in connection with
7 the sale and offer for sale of wines. San Antonio has used both marks in connection
8 with such goods continuously from the time it adopted them until the present.
9
12.
The SAN ANTONIO Word Mark is the subject of U.S. federal
10 trademark registration no. 78923901 (the 901 Registration), a true and correct
11 copy of which is attached as Exhibit A. The 901 Registration was issued by the
12 U.S. Patent and Trademark Office (PTO) on April 17, 2007 for use in connection
13 with wine.
14
13.
The SAN ANTONIO Design Mark is the subject of U.S. federal
15 trademark registration no. 637838 (the 838 Registration), a true and correct copy
16 of which is attached as Exhibit B. The 838 Registration was issued by the PTO
17 on November 27, 1956 for use in connection with wines.
18
14.
These registrations constitute prima facie evidence of the validity of the
19 SAN ANTONIO Word Mark and the SAN ANTONIO Design Mark, of San
20 Antonios ownership of those marks, and of San Antonios exclusive right to use
21 these in connection with the goods specified in those registrations and in connection
22 with related goods and services.
23
15.
San Antonio is the owner of the tradename San Antonio.
24
16.
These marks and the San Antonio Winery tradename are collectively
25 referred to as the San Antonio Marks.

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17.
At all times relevant to the acts complained of herein, San Antonio has
27 used the San Antonio Marks to identify its goods and to distinguish them from the
28 goods and services made and sold or offered by others by, among other things,
1 prominently displaying the mark on its products, on its Internet website and on
2 advertising materials promoting its goods.
In the past two years alone, San
3 Antonios advertising expenditures to promote goods bearing the San Antonio Marks
4 have totaled approximately $3.5 million. Currently, San Antonios sales of wines
5 under the San Antonio marks exceed $45 million annually.
6
18.
The presence of the San Antonio Marks for San Antonios goods
7 indicates to the public that goods and services provided under the San Antonio Marks
8 originate with, or are provided by, San Antonio.
San Antonio adheres to strict
9 quality standards in the manufacture of its wines. Thus, the consuming public has
10 come to associate the San Antonio marks with wines and other goods and services of
11 high quality. As a consequence of all of the foregoing, the San Antonio marks have
12 attained considerable value and the goodwill associated with them represents a
13 valuable business asset.
14
15
THE DEFENDANTS ACTIVITIES

19.
San Antonio is informed and it believes, and based thereon it alleges,
16 that the Defendants are offering to provide, are advertising and are selling in
17 California wine using the mark Tenuta Sant Antonio.
18
20.
Long after San Antonio started using the San Antonio Marks, Defendant
19 Tenuta started using the Tenuta SantAntonio mark and obtained, unknown until
20 recently to San Antonio, registered the mark, registration number 2775119 (119
21 registration).
22
21.
On information and belief, Defendants are also using Tenuta Sant
23 Antonio as a mark without the design element appearing in the 119 registration and
24 a substantially different font.
25
22.
Tenuta has contended that San Antonios use of its San Antonio Marks
26 for wine is likely to cause confusion with regard to Tenutas mark. . Based on that
27 representation, San Antonio contends, since it has priority, that the Defendants are
28
1 using words and symbols in connection with wine a mark that is confusingly similar
2 to the San Antonio Marks, namely the words Tenuta Sant Antonio with wine.
3
23.
By reason of Defendants acts, as alleged herein, San Antonio has
4 suffered damage to its business, reputation and goodwill, including attorney fees.
5
24.
Defendants acts have caused and will continue to cause irreparable and
6 immediate injury to San Antonio for which San Antonio has no adequate remedy at
7 law. Unless Defendants are restrained by this Court from continuing its unauthorized
8 use of marks, words and symbols that are confusingly similar to the San Antonio
9 marks, these injuries will continue to occur.
10
FIRST CLAIM FOR RELIEF
11
(For Trademark Infringement 15 U.S.C. 1114(1))
12
25.
San Antonio repeats and re-alleges paragraphs 1 through 24, as though
13 fully set forth in this paragraph.

14
26.
San Antonio has never authorized or consented to Defendants use of
15 any mark which is the same as, is confusingly similar to, or constitutes a colorable
16 imitation of, the San Antonio marks in commerce in connection with its products or
17 services.
18
27.
Defendants actions, as alleged above, are likely to cause confusion,
19 mistake or deception in violation of Section 32(1) of the Lanham Act, 15 U.S.C.

20 1114(1).
21
28.
Defendants acts have been undertaken with full knowledge of San
22 Antonios rights in and to at least one of the San Antonio marks and with the willful
23 and deliberate intent to cause confusion, mistake and deception among members of
24 the relevant public and to trade on the goodwill associated with the San Antonio
25 marks.
26 //
27 //
28 //
SECOND CLAIM FOR RELIEF
(For False Designation of Origin 15 U.S.C. 1125(a))
29.
San Antonio repeats and re-alleges paragraphs 1 through 28 as though

5
30.
The San Antonio marks are owned by San Antonio and San Antonio has
6 continuously used them in commerce for many years.
San Antonio has not
7 authorized or consented to Defendants use of the San Antonio marks or of any

8 similar marks or names in connection with its products or services beyond usage
9 permitted by the Settlement Agreement.
10
31.
Defendants actions, as alleged above, are likely to cause confusion,
11 mistake or deception as to the affiliation, connection or association of the Defendants

12 with San Antonio, or as to the origin, sponsorship or approval of Defendants
13 products or services by San Antonio in violation of Section 43(a) of the Lanham Act,
14 15 U.S.C. 1125(a).
15
32.
San Antonio is informed and it believes and, based thereon it alleges
16 that Defendants acts have been undertaken with full knowledge of San Antonios
17 rights in and to the San Antonio marks and with the willful and deliberate intent to
18 cause confusion, mistake and deception among members of the relevant public and to
19 trade on the goodwill associated with those marks.
20
33.
Defendants acts have caused and will continue to cause irreparable and
21 immediate injury to San Antonio for which San Antonio has no adequate remedy at
22 law. Unless Defendants are restrained by this Court from continuing its unauthorized
23 use of marks, words and symbols that are confusingly similar to the San Antonio
24 Marks, these injuries will continue to occur.
25
THIRD CLAIM FOR RELIEF
26
(For Common Law Trademark Infringement)
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34.

35.
On information and belief, the Defendants actions, as described above,
2 constitutes conduct which is willful, malicious and so careless as to indicate a

3 wanton disregard for the intellectual property rights of San Antonio. Further, the
4 Defendants acts, as alleged above, constitute conduct which is so outrageous as to
5 demonstrate willfulness, wantonness or recklessness in that they have been
6 undertaken with a conscious disregard of San Antonios intellectual property rights
7 and with a desire to injure San Antonios business and to improve its own.
8
FOURTH CLAIM FOR RELIEF
(Common Law Unfair Competition under Cal. Bus. &
10
Prof. Code 17200, et seq.)
11
36.

13
37.
Defendants' conduct as alleged herein is unlawful, unfair and fraudulent
14 and has caused actual injury to Plaintiffs in violation of California Business and
15 Professions Code 17200, et seq.
16
38.
The above-described acts of Defendants constitute common law unfair
17 competition in that Defendants are attempting to pass off its goods and services as
18 those of San Antonio. Such acts have caused and will continue to cause irreparable
19 and immediate injury to San Antonio for which San Antonio has no adequate remedy
20 at law.
Unless Defendants are restrained by this Court from continuing the acts
21 alleged herein, these injuries will continue to occur.

22
39.
On information and belief, the Defendants actions, as described above,
23 constitutes conduct which is willful, malicious and so careless as to indicate a

24 wanton disregard for the intellectual property rights of San Antonio. Further, the
25 Defendants acts, as alleged above, constitute conduct which is so outrageous as to
26 demonstrate willfulness, wantonness or recklessness in that they have been
27 undertaken with a conscious disregard of San Antonios intellectual property rights
28 and with a desire to injure San Antonios business and to improve its own.
FIFTH CLAIM FOR RELIEF
(Trademark Registration Cancellation Pursuant to 15 USC 1119)
40.

5
41.
Due to San Antonios priority in its San Antonio Marks, the 119
6 registration should be cancelled.

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PRAYER FOR RELIEF

WHEREFORE, San Antonio prays for relief as follows:
1.
For an order permanently enjoining Defendants and Defendants
11 officers, agents, employees and representatives, and all those acting in concert or
12 conspiracy with it from:
13
a.
Using any mark or designation that makes use of the term SAN
14
ANTONIO or any permutation of that term, whether alone or in combination
15
with other words, characters or symbols in connection with the sale, offer for
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sale, promotion or advertising of any products and/or services that are the
17
same as, or are related to, San Antonios goods;
18
b.
19
flyers, containers, labels or packaging bearing the term SAN ANTONIO or
20
any permutation of that term, whether alone or in combination with other
21
words, characters or symbols for use in connection with the sale, offer for sale,
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promotion or advertising of any products and/or services that are the same as,
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or are related to, San Antonios goods;
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c.
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Plaintiffs rights in and to the SAN ANTONIO mark;
26
2.
Instructing or directing any third parties to prepare print advertising,
Imitating, copying, making unauthorized use of, or otherwise infringing,

For an order directing the Defendants to deliver up for destruction all
27 menus, products, labels, boxes, signs, prints, packages, wrappers, and artwork in its
28 possession, or under its control, bearing or intended to bear the term TENUTA
1 SANT ANTONIO or any permutation of that term, whether alone or in combination

2 with other words, characters or symbols;
3
3.
For an order pursuant to 15 U.S.C. 1125(c)(1) permanently enjoining
4 Defendants and Defendants officers, agents, employees, and all those acting in
5 concert or conspiracy with it from making use of the TENUTA SANT ANTONIO
6 mark or any other mark that contains the term SANT ANTONIO or any phonetic
7 equivalent of that mark in connection with restaurant and bar services and/or the sale
8 of wines, including as part of a domain name;
9
4.
For a monetary award in favor of San Antonio in an amount equal to (i)
10 San Antonios actual damages and (ii) to the extent not included in actual damages,
11 the Defendants profits arising from the acts alleged above, such damages and profits
12 to be trebled under 15 U.S.C. 1117(a);
13
5.
For a finding that this is an exceptional case within the meaning of, and
14 for an award of attorneys fees pursuant to, 15 U.S.C. 1117(a);

15
6.
For a finding that the Defendants acts of infringement were willful
16 within the meaning of 15 U.S.C. 1117(c)(2);

17
7.
For an award of pre-judgment interest and post-judgment interest in the
18 maximum amount permitted by law;

19
8.
For a finding that the Defendants acts were undertaken willfully,
20 maliciously and so carelessly as to indicate a wanton disregard for the intellectual

21 property rights of San Antonio and that the Defendants acts constitute conduct
22 which is so outrageous as to demonstrate willfulness, wantonness or recklessness in
23 that they were undertaken with a conscious disregard of San Antonios common law
24 trademark rights and for an award of exemplary damages in an amount sufficient to
25 punish, deter, and make an example of Defendants for the acts complained of herein.
26
9.
Cancellation of the 119 registration;
27
10.
For an award of costs under 15 U.S.C. 1117(a), or as otherwise
28 provided by law; and

11.
For such other and further relief as the court deems just and proper.
Respectfully submitted,
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DATED: November 12, 2015

LEECH TISHMAN FUSCALDO & LAMPL LLP
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By: /s/Ivan M. Posey

Ivan M. Posey
Attorneys for Plaintiff,
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REQUEST FOR JURY TRIAL
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San Antonio requests a trial by jury of all which may properly be tried to a
4 jury.
5
6 DATED: November 12, 2015 Respectfully submitted,
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LEECH TISHMAN FUSCALDO & LAMPL LLP
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By: /s/Ivan M. Posey

Ivan M. Posey
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Attorneys for Plaintiff,

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Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 1 of 12 Page ID #:1

1 Jeffrey G. Sheldon (SBN 67516)

Attorneys for Plaintiff

Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 2 of 12 Page ID #:2

2 Fuscaldo Lampl, alleges as follows:

Plaintiff San Antonio Winery, Inc. (Plaintiff or San Antonio) is a

On information and belief, Defendant UVE Enterprises, Inc. (UVE) is

9 a California Corporation and on information and belief is or was doing business as

Upon information and belief Defendant Tenuta SantAntonio, Armando

12 Castagnedi, Massimo Castagnedi, Paolo Castagnedi, Tiziano Castagnedi, (Tenuta)

Upon information and belief Defendant Chambers & Chambers Inc.

17 (Chambers) is a California corporation having a place of business in San

True names and capacities of Defendants sued herein as DOES 1

Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 3 of 12 Page ID #:3

JURISDICTION AND VENUE

This Court has supplemental jurisdiction over the non-

This Court has personal jurisdiction over Tenuta because, on

SAN ANTONIO AND ITS TRADEMARKS

San Antonio is a family owned corporation that is engaged in, among

Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 4 of 12 Page ID #:4

San Antonio is the owner of several well-known trademarks, including

The SAN ANTONIO Word Mark is the subject of U.S. federal

The SAN ANTONIO Design Mark is the subject of U.S. federal

These registrations constitute prima facie evidence of the validity of the

San Antonio is the owner of the tradename San Antonio.

25 referred to as the San Antonio Marks.

Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 5 of 12 Page ID #:5

In the past two years alone, San

San Antonio adheres to strict

THE DEFENDANTS ACTIVITIES

San Antonio is informed and it believes, and based thereon it alleges,

On information and belief, Defendants are also using Tenuta Sant

Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 6 of 12 Page ID #:6

By reason of Defendants acts, as alleged herein, San Antonio has

FIRST CLAIM FOR RELIEF

(For Trademark Infringement 15 U.S.C. 1114(1))

San Antonio repeats and re-alleges paragraphs 1 through 24, as though

13 fully set forth in this paragraph.

San Antonio has never authorized or consented to Defendants use of

Defendants actions, as alleged above, are likely to cause confusion,

19 mistake or deception in violation of Section 32(1) of the Lanham Act, 15 U.S.C.

Defendants acts have been undertaken with full knowledge of San

Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 7 of 12 Page ID #:7

SECOND CLAIM FOR RELIEF

(For False Designation of Origin 15 U.S.C. 1125(a))

San Antonio repeats and re-alleges paragraphs 1 through 28 as though

4 fully set forth in this paragraph.

6 continuously used them in commerce for many years.

San Antonio has not

7 authorized or consented to Defendants use of the San Antonio marks or of any

Defendants actions, as alleged above, are likely to cause confusion,

11 mistake or deception as to the affiliation, connection or association of the Defendants

San Antonio is informed and it believes and, based thereon it alleges

THIRD CLAIM FOR RELIEF

(For Common Law Trademark Infringement)

San Antonio repeats and re-alleges paragraphs 1 through 33 as though

28 fully set forth in this paragraph.

Case 2:15-cv-08826-GHK-E Document 1 Filed 11/12/15 Page 8 of 12 Page ID #:8

On information and belief, the Defendants actions, as described above,

2 constitutes conduct which is willful, malicious and so careless as to indicate a

FOURTH CLAIM FOR RELIEF

(Common Law Unfair Competition under Cal. Bus. &

Prof. Code 17200, et seq.)