Its the spooky time of year, here is a story we originally previously covered but was just too good to not bring back. (And I’m not just republishing this story cause I’m away at two conferences and too lazy to draft an article.) Below, with a helpful tip from a reader, we give you an update on a spooky story that first haunted these archives back in October 2014.
If you thought it was hard to kill off Michael Myers in the Halloween movies you have never met Hallowine. Despite a trademark dispute that was seemingly resolved several years ago, the defendant has continued to distribute the ghastly wine and now had another death sentence imposed by an angry judge.
Gather around and be ready to be horrified by a scary story about trademark infringement. Door Peninsula Winery is a Wisconsin company that began selling and distributing spiced apple wine called “Hallowine” in 1998. In 2005, Illinois River Winery also got into the apple wine business and began distributing and sought to register the trademark for HALLOWINE. And here is the scary part, the parties have been fighting…and incurring attorneys’ fees about it ever since. The Trademark Office sided with Door Peninsula because their use of the mark was first. Remember, it is not first to register but first to use a trademark that grants priority.
Illinois was not scared off by the ruling and continued to sell its “Hallowine” anyway. Door tried garlic and holy water but Illinois could not be stopped and Door was forced to file a lawsuit asserting trademark infringement. Not surprising, Door won the infringement case and $508,000 plus in damages. But like a zombie, Illinois wouldn’t die and took the case to the Court of Appeals. The grime-faced judges, dressed from head to toe in black robes, affirmed the lower court’s ruling saying that Illinois was trying to make new arguments at the appeals court which were deemed waived. In 2014, the appeals court once again put a nail in the coffin on Illinois Hallowine but you can’t kill the undead.
Door received $250,000 in satisfaction of the judgment but a permanent injunction banning Illinois’ use of the HALLOWINE mark remains in effect. This year, once again there is a chill in the air and unauthorized wine on the shelves. Despite the courts’ rulings, Illinois continued to distribute its forbidden nectar. Illinois began to sell the wine that can be seen to the right, it has the words “Hallow” in large print, “Apple/Pumpkim spiced” in small print, and “Wine” in medium sized fit. Illinois was clearly trying to find a clever way around the injunction, but that didn’t work. Door brought a motion for contempt claiming that Illinois was in violation of the permanent injunction and continuing to use the HALLOWINE mark without authorization. Illinois wore its angel costume to court to testify and claimed that the new name of the wine was just “Hallow” and the bottle happens to have the word “wine” underneath it solely to explain to customers what the product was.
The judge may have had a little too much candy and mistakenly refers to this as a copyright dispute several times but in the end made the right call. The judge found that the smaller print on the label over the words “wine” and “Apple/Pumpkim spiced” did not stave off customer confusion. The judge stated that it seems likely the name was used because “Hallowine” was more preferred by customers and those customers would be confused to think that HALLOWINE is associated with Door’s product, when it is not. It his ruling, the judge ordered that the Hallow Wine (smaller font) be removed from all distributors and retailers and no longer be sold; that Illinois pay all profits made from the wine for 2014 and 2015; and awarded Door its attorneys’ fees.
Silver bullet, stake to the heart, a beheading, or an order of contempt, something must be able to stop this monstrous trademark infringement from reappearing. To be continued….