United States District Court, W.D. North Carolina, Charlotte Division
J. CONRAD, JR. UNITED STATES DISTRICT JUDGE
MATTER comes before the Court on Defendants’
Motion to Dismiss, or in the Alternative, Stay, (Doc. No. 5);
the Magistrate Judge’s Memorandum and Recommendation
(“M&R”), (Doc. No. 19); Plaintiff’s
Objections, (Doc. No. 20); Defendants’ Response to
Plaintiff’s Objections, (Doc. No. 22); and
Plaintiff’s Reply in Support of Objections, (Doc. No.
Winestore Holdings LLC (“Plaintiff” or
“Winestore”) is a wine retailer based in North
Carolina. (Doc. No. 1, ¶ 10.) Plaintiff has five stores
located throughout North Carolina and also offers its
products online through its website. (Doc. No. 1, ¶ 10.)
Defendant Justin Vineyards & Winery LLC
(“Justin”) is a wine retailer based in
California. (Doc. No. 1, ¶ 11.) Justin offers its
products in stores throughout the United States and online
through its website. (Doc. No. 1, ¶ 11.) Justin is a
subsidiary of Defendant The Wonderful Company LLC
(“Wonderful” and collectively with Justin,
“Defendants”). (Doc. No. 1, ¶ 11.)
filed U.S. Trademark Application Serial No. 86/851, 094 for
the mark OVERBROOK on December 16, 2015. (Doc. No. 1, ¶
14.) Plaintiff’s application was approved by the U.S.
Patent and Trademark Office (“USPTO”) and
published in the Official Gazette on May 23, 2017. (Doc. No.
1, ¶ 15.) Plaintiff has been using the OVERBROOK mark in
connection with wine since at least April 4, 2016. (Doc. No.
1, ¶ 16.)
own the OVERLOOK® trademark, which is the subject of U.S.
Trademark Registration No. 3, 158, 532. (Doc. No. 1, ¶
17.) On April 25, 2017, Defendants’ counsel sent an
email to Plaintiff’s counsel stating, in relevant part:
We have learned that your client has filed a trademark
application for “overbrook, ” U.S. Serial No.
86851094, for use with wine in International Class 33.
Our client believes that this trademark is too similar to its
OVERLOOK® trademark and its use could be interpreted as
intending to trade off of the goodwill of our client’s
distinctive trademarks, creating a likelihood of confusion,
mistake, and deception as to your client’s affiliation,
connection, or association with JUSTIN among consumers and
the trade. Such unauthorized uses may also dilute our
client’s trademarks by, among other things, blurring
the distinction between JUSTIN and your client’s
company. These unauthorized actions, therefore, may
constitute trademark infringement, false designation of
origin and unfair competition under the laws of the United
States and state law.
JUSTIN prefers to settle matters amicably where possible.
Therefore, please contact me at your earliest convenience . .
(Doc. No. 1-2.)
14, 2017, Plaintiff filed an action in this Court seeking a
declaratory judgment that use of its OVERBROOK mark does not
violate any law or any purported trademark rights of
Defendants (the “First Action”). See
Winestore Holdings LLC v. Justin Vineyards &
Winery LLC, No. 3:17-cv-00326, 2018 U.S. Dist. LEXIS
133669 (W.D. N.C. Aug. 8, 2018). Plaintiff’s sole basis
for filing the First Action was Defendants’ April 25,
2017 email. See id.
15, 2017, Justin filed a Notice of Opposition with the
USPTO’s Trademark Trial and Appeal Board
(“TTAB”). (Doc. No. 1-3.) In its opposition,
Justin contends that Plaintiff’s registration and use
of the OVERBROOK mark “is likely to cause confusion,
mistake, or deception[.]” (Doc. No. 1-3, ¶ 13.)
Justin alleges that “[t]he purchasing public is likely
to be led to believe that wine or related goods bearing the
OVERBROOK Mark emanate from or are . . . legitimately
connected with or affiliated with [Justin], or that
[Plaintiff] and its business are owned by or are affiliated
with [Justin] and its OVERLOOK® branded products.”
(Doc. No. 1-3, ¶ 14.) Justin further states that it
would be damaged from the resulting confusion if Plaintiff
were permitted to use the OVERBROOK mark. (Doc. No. 1-3,
¶ 15.) Justin requests that the TTAB deny
Plaintiff’s application for registration of the
OVERBROOK mark. (Doc. No. 1-3, ¶ 16.)
filed a motion to dismiss the First Action for lack of
subject matter jurisdiction, alleging that their April 25,
2017 email was insufficient to meet the case or controversy
requirement for a declaratory judgment action. Winestore
Holdings LLC, 2018 U.S. Dist. LEXIS 133669, at
*4. This Court granted Defendants’ motion on August 8,
At the time of Plaintiff’s complaint, only
Defendants’ email had been exchanged, and this support
is insufficient to support a controversy that is substantial,
“definite and concrete” and of “sufficient
immediacy and reality” to require court involvement.
For these reasons, the Court finds Defendants’ email
insufficient to meet the actual controversy requirement for a
Declaratory Judgment action, and therefore
GRANTS Defendants’ Motion to Dismiss.
The Court acknowledges the alleged dispute may ...