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ARTICLE · 18 NOVEMBER 2016

"Use In Commerce": Look Before You Leap

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Plaintiffs in trademark cases may be tempted to file suit as early as possible to head off any potential consumer confusion.

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Order Granting Motion to Dismiss, With Leave to Amend, Stag's Leap Wine Cellars, LLC, et al. v. Treasury Wine Estates Americas Co., 16-cv-04922-RS (Judge Richard Seeborg)

Plaintiffs in trademark cases may be tempted to file suit as early as possible to head off any potential consumer confusion. But as a recent order explains, plaintiffs need to keep in mind that the Lanham Act requires a "use in commerce" to maintain a complaint. Plaintiffs who fail to plead an adequate "use in commerce" could find themselves fighting (and losing) a motion to dismiss.

The plaintiffs in Stag's Leap Wine Cellars sell wines under names including S.L.V. (Stag's Leap Vineyards). This wine comes from the Stag's Leap District, a well-known Napa Valley wine-growing region recognized as an American Viticultural Area. California law restricts the circumstances under which a wine seller may use "Stag's Leap" or a confusingly similar term.

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