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Cesari S.R.L. v. Peju Province Winery L.P.

United States District Court for the Southern District of New York

December 11, 2017, Decided

17 Civ. 873(NRB)

Opinion

MEMORANDUM AND ORDER

NAOMI REICE BUCHWALD

UNITED STATES DISTRICT JUDGE

In 2004, the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("USPTO") adjudicated a trademark opposition proceeding between two vintners: Cesari S.r.L. ("Cesari") and Peju Province Winery L.P. ("Peju Province"). The TTAB ultimately refused Peju Province's pending trademark application upon concluding that its mark, LIANA, was likely to cause confusion with Cesari's previously registered mark, LIANO. After Peju Province persisted in using the refused mark over the next thirteen years, Cesari [*2]  filed this infringement action. Cesari now moves for partial summary judgment on a narrow issue: whether Peju Province is—along with its co-defendants, Peju Family Operating Partnership, L.P. ("Peju Partnership"), and Peju Province Corporation ("Peju Corporation," and collectively, "defendants")—precluded from re-litigating the likelihood of confusion between the parties' marks. For the reasons discussed below, Cesari's motion is granted in part and denied in part.

Background1

Cesari is an Italian winery based in San Pietro that produces wine bearing the mark LIANO. See Ariana Peju Declaration ("Peju Decl.") ¶ 8.2 In August 2001, Cesari filed an application with the USPTO to register the "LIANO" mark with respect to wines in International Class 33. Plaintiff's Rule 56.1 Statement ("Pl.'s 56.1") ¶ 2. The application was granted in January 2003. Id. ¶ 3. Meanwhile, in 2002, Peju Province, a family-operated winery in Northern California,3 began producing a wine named LIANA. Peju Decl. ¶ 4. In February 2003, Peju Province filed its own application with the USPTO to register "LIANA" with respect to wines in International Class 33. Pl.'s 56.1 ¶¶ 8, 27.

Cesari opposed Peju Province's application, [*3]  initiating an opposition proceeding before the TTAB. Id. ¶ 28. Cesari asserted, inter alia, that Peju Province's applied-for mark was likely to cause confusion with its own. SJX-036. In a July 2004 ruling, the TTAB agreed, granting summary judgment to Cesari and refusing Peju Province's registration application. Cesari S.r.L. v. Peju Province, No. 91158374, 2004 TTAB LEXIS 431, 2004 WL 1703103 (T.T.A.B. July 20, 2004).4

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2017 U.S. Dist. LEXIS 210542 *

CESARI S.R.L., Plaintiff, - against - PEJU PROVINCE WINERY L.P., PEJU PROVINCE CORPORATION, and PEJU FAMILY OPERATING PARTNERSHIP, L.P., Defendants.

Subsequent History: Partial summary judgment denied by Cesari S.R.L. v. Peju Province Winery L.P., 2018 U.S. Dist. LEXIS 190756 (S.D.N.Y., Nov. 7, 2018)

Later proceeding at Cesari S.R.L. v. Peju Province Winery L.P., 2019 U.S. Dist. LEXIS 187471 (S.D.N.Y., Oct. 3, 2019)

Motion granted by Cesari S.R.L. v. Peju Province Winery L.P., 2020 U.S. Dist. LEXIS 34692 (S.D.N.Y., Feb. 24, 2020)

Prior History: Cesari S.r.L. v. Province, 2004 TTAB LEXIS 431 (Trademark Trial & App. Bd., July 20, 2004)

CORE TERMS

wines, usages, marks, registration, preclusion, summary judgment, trademark, Partnership, register, marketplace, quotation, parties, winery, likelihood of confusion, issue preclusion, judicial notice, infringement, adjudicated, non-party, entities