Posted: Jan 10, 2018
With To Kalon, it’s never over.
Now comes word that Constellation has abandoned all three trademark registrations.
Why? Constellation did not respond to requests for comment, but signs point to a desire to avoid another legal confrontation with Andy Beckstoffer, who owns a portion of the To Kalon Vineyard and who has challenged Mondavi on its To Kalon trademarks before.
Although six parties own portions of this famous property, only one — Robert Mondavi Winery — owns the rights to its name. In 1988 and 1994, respectively, Mondavi registered trademarks for “To Kalon” and “To Kalon Vineyard.” But Beckstoffer wanted his winery clients to be able to use the name To Kalon on their bottles too. He and his client Schrader Cellars took Mondavi to court.
Beckstoffer’s argument was simple: “I believe that a vineyard is a place, not a marketing concept,” he wrote in one of the lawsuits. If you can’t claim exclusive rights to a name like “California,” the reasoning goes, you shouldn’t be able to hold a trademark on To Kalon, which has been recognized as a vineyard — therefore, as a place — for 150 years.
Mondavi and Beckstoffer settled out of court in 2003. Beckstoffer was granted a royalty-free license of Mondavi’s “To Kalon” and “To Kalon Vineyard” trademarks; any winery that buys fruit from Beckstoffer’s portion of To Kalon can say so on its wine label. It may have been a victory — at least a partial one — for Beckstoffer’s business interests, but the lawsuits did little to resolve the question of To Kalon’s primary identity: land or brand?
This time, it looks like Beckstoffer wasn’t going to let Mondavi get away with three additional trademarks. He managed to get the Trademark Trial and Appeal Board to extend the period of opposition to the new trademarks — originally supposed to end in July of 2017 — to October. And then, on Sept. 26, Constellation abandoned all three of the new trademark applications. (Beckstoffer, too, declined to comment.)
The new wine brand, to be made by Andy Erickson, will forge ahead — but what it will be called is anybody’s guess.
Did the prospect of another legal battle with its neighbor just seem like bad PR for Constellation? Was it ruled to be a bird-in-the-hand situation — might Constellation worry that another lawsuit could endanger its claim to the two original To Kalon trademarks?
Which brings us to the second recent To Kalon-related development. The creek that runs through the To Kalon Vineyard is now officially named To Kalon Creek, thanks to a proposal that Graeme MacDonald, whose family owns a section of the vineyard, submitted to the U.S. Board on Geographic Names. This makes it possible for the words “To Kalon” to appear on a map for the first time in the vineyard’s 150-year history.
MacDonald — who sells his To Kalon fruit to Mondavi and keeps a small amount for his family’s own MacDonald wine brand — is now putting together a proposal for the National Register of Historic Places and the Historic American Landscapes Survey (both of which operate under the National Park Service). His hope is that To Kalon will be recognized as the historic place that it is — in a way, to borrow Beckstoffer’s language, that transcends marketing concepts.
Naming a small creek may sound insignificant, but “you’ve gotta take the slow steps,” MacDonald says. “This is about building a foundation for the future of great vineyards in America.
“I am hopeful this process will be a precedent for vineyard designation policy in the future and encourage stewardship of other historic agricultural sites around the Napa Valley,” he says. “If this is the first one to get recognized, just think of what could follow.”
What could follow, potentially: a decisive interpretation of the To Kalon name as a place before a brand. The names board approval implies this interpretation already. Since it won’t approve names that constitute a “promotion of commercial activities,” MacDonald had to argue that the creek was named not for a trademark that Mondavi had made famous, but for the concept of To Kalon as a geographic place that had existed long before Robert Mondavi arrived there.
If this interpretation holds, what might be the fate of Mondavi’s trademarks?
As I said, with To Kalon, it’s never over.
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