A party can challenge the lawfulness of prior user’s use where prior user fails to follow labeling laws related to the product
Monday, April 11th, 2011The Wine Group LLC v. L and R Wine Company, 2011 U.S. Dist. LEXIS 35405 (E.D. Cal. 2011)
After Plaintiff, TWG, sued defendant, LR, for trademark infringement, LR brought a counterclaim for cancellation of TWG’s registration based on priority of use. TWG answered with an affirmative defense that LR’s use prior to TWG’s registration was unlawful because they violated sales and labeling rules for alcohol products. LR then filed a motion to stike. The court denied the motion to strike stating:
“for purposes of trademark priority, lawful use may require compliance with labeling requirements. (citation) As a result, TWG’s defense is not clearly invalid as a matter of law. Further, any legal challenge to the legal sufficiency of the Second Affirmative Defense presents a disputed and substantial question of law that should not be resolved through a motion to strike.”
