Duckhorn files lawsuit over Duck Dynasty wines

Duckhorn Wine Company has a history of going after wineries that dare to use a duck in their names or labels.

But this time, the winery is hunting a potentially tougher target: the self-professed "redneck royalty" of the hit A-E TV show "Duck Dynasty."

The Napa Valley winery is going after the Duck Dynasty folks because they've used the word "Duck" and an image of a duck on their wines.

That's right: the reality TV stars with the motto "Faith, Family and Facial Hair" who made their fortune selling duck hunting gear have launched a wine brand, called "Duck Commander."

In November, the Robertson family of Duck Dynasty fame collaborated with Trinchero Family Estates to produce three wines from California grapes: Triple Threat red blend, Wood Duck chardonnay and Miss Priss pink moscato.

"We decided to create Duck Commander Robertson Family Wines because we know that many of our customers and our viewers choose to celebrate family moments with wine," Duck Commander CEO Willie Robertson said at the time.

Then the bearded, brawny men became the latest in a string of targets for Duckhorn Wine Company. The St. Helena winery, which produces wines that largely sell for $50 and up, has taken on a number of what it deems to be trademark violators in recent years, although not always successfully.

"It turns out that Duckhorn doesn't own the word 'duck,'" said Jay Behmke, an intellectual property attorney at Santa Rosa law firm Carle, Mackie, Power - Ross. "I know that Duckhorn has an interest in trademarks, and I've seen their interest, but there are a lot of duck trademarks, so they don't have an exclusive on that."

Duckhorn took aim at Duck Pond Cellars in Oregon in the mid '90s, but that case settled. Greg Fries, president of Duck Pond Cellars, confirmed the case was resolved, but said he was bound by the settlement not to comment.

In 1999, Duckhorn contacted Cecchetti Sebastiani Cellar when it released a Smoking Duck brand of wine, according to the New York Times. Sebastiani agreed to rename the brand Smoking Loon, the Times reported.

Two years later, Duckhorn got into a legal battle with Long Island's Pindar Vineyards and its Duck Walk Vineyards brand. Under a 2003 settlement in U.S. District Court, Duck Walk was allowed to continue producing wine, but it agreed to clearly label the wines' place of origin, according to the Napa Valley Register.

Plenty of wine companies have registered trademarks for names that include the word "duck" before Duckhorn, including Duck Pond Cellars, Behmke said as he scrolled through a trademark database.

But that doesn't always stop companies from trying to protect their trademarks, which often are more valuable than the rest of a winery's assets combined.

"There is a large application of the golden rule in trademark law, where if you have the money, you can get what you want," Behmke said.

Duckhorn may have the money to bury many competitors in litigation, but Duck Commander isn't exactly hurting for cash. Forbes.com said Duck Commander's revenues from product sales would reach $400 million by the end of 2013. Phil Robertson's book "Happy, Happy, Happy" has been on the New York Times Best Seller list for 29 weeks.

Of course, Duck Commander has been in the spotlight since Phil Robertson, patriarch of Duck Dynasty, was suspended from the show in December for comments linking homosexuality to bestiality.

But nothing seems to stop the Robertsons for long. A-E relented on its position and reinstated him on the show just weeks later.

Has Duckhorn Wine Company finally met its match?

In its November complaint, Duckhorn accused Duck Commander of trademark infringement and dilution of its brand. The suit targeted Duck Commander, Inc., the Louisiana company specializing in duck hunting gear that was started by Phil Robertson in 1972; Trinchero Family Estates, the St. Helena wine company that sells and markets its wine; and Wal-Mart, which also sells the wine.

"Duckhorn is committed to protecting its family of duck related marks and labels," wrote Henry Bunsow, attorney for Duckhorn Wine Company, in a letter to Trinchero.

In the letter, Bunsow complained that the Robertson family was in the Napa Valley for a launch party and didn't respond to Duckhorn's requests to resolve the issue.

"Duckhorn is very disappointed by your lack of response to this serious matter," Bunsow wrote.

In a November reply, attorney J. Scott Gerien called Duckhorn's trademark claims overreaching and unsupported.

"Duckhorn's ownership of the DUCKHORN mark for wine does not provide Duckhorn with a monopoly on the word 'DUCK' as to wine," Gerien wrote.

Alex Ryan, president and CEO of Duckhorn, and Bunsow, Duckhorn's attorney, did not respond to repeated calls for comment. Gerien, lawyer for the defendants, also didn't reply, nor did Trinchero Family Estates.

"They're going to have to do a lot of legal work if they're going to want to own all ducks," said Laurel Sutton, strategist and linguist with Oakland-based naming company Catchword, which recently helped name Agilent Technologies' spinoff company, Keysight Technologies.

"I'm looking at a picture of the two bottles side by side," Sutton said. "And the claim is that the consumers are confused and buying the cheap one instead of the expensive one ... and honestly I don't buy that."

The publicity from the trademark dispute could be a boon or a bust for Duckhorn.

Few wineries have the distinction of getting a write-up by TMZ, but going up against heavyweights like Duck Dynasty landed the winery in the headlines at the gossip website.

Behmke has seen this happen before, when he defended the former Belvedere Winery's trademark from a new vodka that was going on the market by the same name. Belvedere Vodka took off, eventually usurping the winery's place in Belvedere-drinking consumers' minds.

"I can see why Duckhorn may be concerned about all this publicity," Behmke said. "Duck Commander may be the first competitor that's come along that's looking like they might be the most famous duck wine."