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Trademark Infringement in Ferragamo S.p.A. v. Ferragamo Winery: Foul Play or Sour Grapes?

Far from the gridiron and Super Bowl XIV, but still on the "field," former Los Angeles Ram Vince Ferragamo ("VF") has quarterbacked his way to a successful business venture with his Tentua di Ferragamo Winery. However, Ferragamo is now at risk of losing valuable terroir, as similarly named Italian luxury fashion outlet Ferragamo S.p.A. is suing him for allegedly infringing and diluting their FERRAGAMO trademark. (Ferragamo S.p.A. v. Ferragamo Winery, No. 16-03313 (S.D.N.Y. filed May 4, 2016)). Ferragamo S.p.A., which first sent a cease-and-desist letter in July of last year, is claiming that the use of the Ferragamo name to sell wine is causing customer confusion and diluting their famous trademark. Ferragamo S.p.A. also uncorked additional causes of action alleging cybersquatting and state unfair competition claims, among others, and is seeking injunctive relief that would prohibit VF from using the Ferragamo name in connection with his winery.

Ferragamo S.p.A. is well-known as a luxury fashion company and retailer, primarily specializing in shoes and leather goods. But, like other fashion giants, Ferragamo S.p.A. has dipped its toes into the wine business in the past. Indeed, in the 1980s, Ferragamo S.p.A. apparently commenced selling wine in the United States. Ferragamo S.p.A.'s court filings include news clippings of its first wine – the Ferragamo Chianti Putto – with an accompanying tagline stating: "It is unusual for a woman to head a winery, but everything about this dynamic woman is unusual." 

Though it subsequently discontinued selling wine in the U.S., Ferragamo S.p.A. alleges that it hoped to reintroduce wine products into the U.S. and had filed a trademark application in 2006, which signaled a desire to use the FERRAGAMO mark in connection with wine, sparkling wine, and distilled liquor and spirits. The application was unopposed, and the trademark, No. 3,431,280, was officially registered in 2008. Ferragamo S.p.A. also filed another application in 2012, which was also unopposed.   

Meanwhile, VF first began to tackle the wine business in 2010, using Sangiovese and Cabernet grapes to create his first vintage, which he named after his daughter. In 2013, VF registered the FerragamoWinery.com domain name, which Tentua di Ferragamo Winery uses to sell and ship wine both to individual and commercial buyers.

Ferragamo S.p.A. alleges that VF's winery made unauthorized use of both its well-known luxury trademarks and wine-related marks in marketing its online wine sales, allegedly causing consumer confusion, creating a false affiliation with its Ferragamo S.p.A. and diluting its marks. One of the aspects of FerragamoWinery.com that is particularly bothersome to Ferragamo S.p.A. is the use of Tuscan photos and imagery. But, VF's family has actually owned a separate winery in Tuscany, "Il Borro", for over twenty years. Still, Ferragamo S.p.A. believes that evoking Tuscany to help sell California wine is a false start. It, moreover, advanced a claim for cybersquatting (i.e., the bad faith, abusive registration and use of the distinctive trademarks of others as domain names), arguing that the domain www.ferragamowinery.com was registered and used with a bad faith intent to profit from Ferragamo S.p.A.'s trademarks.

VF's first play from the huddle was to send a June 2016 letter to opposing counsel (which was also submitted to the court). In the letter, VF's attorney stated that S.p.A.'s complaint was "deficient" and "plead in bad faith to harass [Vince]." VF has also argued that the New York court is the improper venue for the dispute, and that the suit should have been filed in California, where Ferragamo both lives and runs his winery. VF contends that selling and shipping wine to New York is not sufficient to give New York jurisdiction over the case.

The court must first decide the issue of venue before moving forward. Assuming it does go forward, the court will have to decide if VF should have to fumble away his last name or whether the Tentua di Ferragamo name fits VF like a pair of Ferragamo shoes.

© 2019 Proskauer Rose LLP.

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