Italian luxury fashion house Salvatore Ferragamo has filed a lawsuit against former Los Angeles Rams football player Vince Ferragamo for infringing its trademarks due to the latter’s operation of Ferragamo Winery. Per the complaint, filed in the Southern District of New York on May 4th, Ferragamo Winery is likely to cause consumer confusion and dilute Salvatore Ferragamo’s trademarks, which include ones for wines, sparking wines, distilled liquors, and distilled spirits; the United States Patent and Trademark Office registered the trademarks for Salvatore Ferragamo’s wine products in 2008 and 2012, with priority dates going back to when the applications were filed because they were intent-to-use filings. The plaintiff argues that their use of the Ferragamo trademark, which has been in the U.S. market since the late 1940s, has a reputation for high-quality goods. The suit goes on to explain that the defendant has been doing business online via the ferragamowinery.com website, and implying that the wine is made in Italy, with pictures of Tuscany, when it’s actually produced in California. A web search for “Ferragamo Winery” also brings up results that reference both parties. The family of Salvatore Ferragamo actually has a winery in Tuscany called Il Boro.
“The likelihood of consumer confusion” is the cornerstone of a trademark infringement claim, and a court will examine several factors, often called the Polaroid factors, to determine the probability that buyers, when coming across these products in the marketplace under ordinary circumstances, would be confused between them. These factors will look at things like the strength of Salvatore Ferragamo’s mark, similarity of the marks, similarity of the products, Vince Ferragamo’s intent, actual evidence of confusion, and sophistication of the buyers.
Salvatore Ferragamo points to the fact that its mark is distinctive to the public, and that it has acquired secondary meaning – another important term in the world of trademarks – because of its advertising, sales and popularity. Therefore, defendant’s use of it would cause consumers to believe that there was an association between the two companies. Salvatore Ferragamo points out that Ferragamo Winery is benefitting from its goodwill and reputation. For the dilution claim, which doesn’t actually require confusion, the plaintiff argues a lot of these same things and states that Ferragamo Winery’s products are of an “inferior quality” and “likely to tarnish those trademarks and cause blurring in the minds of consumers…thereby lessening the value of the Ferragamo Luxury Trademarks, including the Ferragamo Wine Trademarks, as unique identifiers of Salvatore Ferragamo’s products.”
Salvatore Ferragamo also accuses Ferragamo Winery of cybersquatting, which involves registering and using an Internet domain name with the bad faith intent to profit from the goodwill of a trademark of another. “Bad faith intent” is the element that has to be proved. In the suit, the plaintiff states that Ferragamo Winery “intended to divert consumers away from the Plaintiff Salvatore Ferragamo to a website accessible under an Infringing Domain Name that could harm the goodwill represented by the Ferragamo Luxury Trademarks, including the Ferragamo Wine Trademarks, for commercial gain.”
The plaintiffs are seeking a permanent injunction for any further use of the Ferragamo mark, the destruction of any products bearing it, the transfer or cancelation of the domain name, triple damages, and profits.
Stay tuned to The Fried Firm blog for more information on trademark infringement.