Case 0:06-cv-00213-JNE-SRN Document 226 Filed 01/04/10 Page 1 of 18

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MINNESOTA

_________________________________
)
Champagne Louis Roederer, )
)
Plaintiff, )
)
v. ) Civil No. 06-CV-213 JNE/SRN
)
J. Garcia Carrión, S.A. and )
Friend Wine Marketing, Inc. )
d/b/a CIV USA, )
)
Defendants. )
_________________________________)

PLAINTIFF CHAMPAGNE LOUIS ROEDERER’S TRIAL BRIEF

I. INTRODUCTION

Champagne Louis Roederer (“Roederer”) brings claims of trademark infringement

and trademark dilution against J. Garcia Carrión, S.A. (“Carrión”) and Friend Wine

Marketing, d/b/a CIV USA (“CIV”). Roederer markets and sells champagne, including

the premier champagne, CRISTAL. CRISTAL is the flagship brand for all Roederer

champagne products. Carrion and CIV market and sell cava, another sparkling wine,

under the name CRISTALINO. Roederer seeks, among other relief, a permanent

injunction enjoining use of the CRISTALINO name.

The claims of trademark infringement and dilution are based on entirely different

consumer states of mind. Both are present here. An appreciable number of consumers

falsely believe because of the name CRISTALINO that an inexpensive sparkling wine is

the low-priced offering of the makers of the premier champagne, CRISTAL. A different
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appreciable number of consumers, knowing the source of the products are different,

associate the names CRISTALINO and CRISTAL, diluting the distinctiveness of the

famous brand. In both instances, Defendants trade on the fame and renown of CRISTAL.

The Defendants’ use of CRISTALINO on their sparkling wine product is an

illegitimate brand extension that trades on the reputation and image of the famous mark,

CRISTAL. Consumers likely believe that CRISTALINO sparkling wine is associated

with, sponsored by, or is in some way connected with the maker of the prestige

champagne CRISTAL. Without consent, Defendants are the beneficiaries of the

goodwill in CRISTAL, built over generations, as a consequence of their use of the name

CRISTALINO. That is trademark infringement. See Anheuser-Busch, Inc. v. Balducci

Publ’ns, 28 F.3d 769, 774 (8th Cir. 1994); General Mills, Inc. v. Kellogg Co., 824 F.2d

622, 626 (8th Cir. 1987).

Roederer is entitled to exclusive control over the reputation and image of its

famous mark, CRISTAL, and the consuming public is entitled to be free of confusion,

mistake and deception. See James Burrough Ltd. v. Sign of the Beefeater, 540 F.2d 266,

274 (7th Cir. 1976); Real News Project, Inc. v. Indep. World TV, Inc., No. 06 Civ 4322,

2008 U.S. Dist. LEXIS 41457, *71-72 (S.D.N.Y. May 27, 2008); Weight Watchers Int’l

v. The Stouffer Corp., 744 F. Supp. 1259, 1269 (S.D.N.Y. 1990). The fact that the

parties’ products are not directly competitive, and that the purchaser of an inexpensive

bottle of CRISTALINO sparkling wine knows he or she has not purchased an expensive

bottle of French champagne, is of no moment. Product confusion is not the issue. The

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issue is confusion of association or sponsorship. Only Roederer has the right to sell a

sparkling wine under the name CRISTALINO.

The Lanham Act also entitles the owner of a famous mark to be free from the

“whittling away” of the distinctiveness of its brand through dilution by blurring. In

addition to the consumers who erroneously believe that CRISTALINO is related in some

way to the maker of CRISTAL, other consumers now associate the famous brand

CRISTAL with CRISTALINO sparkling wine, thereby weakening the distinctiveness of

the famous brand. 15 U.S.C. § 1125(c)(2)(B); Starbucks Corp. v. Wolfe’s Borough

Coffee, Inc., No. 08-3331-cv, 2009 U.S. App. LEXIS 26300, *11 (2nd Cir. Dec, 3, 2009).

In both instances the reputation and image of the prestige champagne CRISTAL is

wrongly attributed to the CRISTALINO product. Roederer is twice harmed by

Defendants’ improper conduct.

II. THE CLAIMS AND THE COURT’S JURISDICTION

Roederer’s claims of trademark infringement and dilution arise under the Lanham

Act, 15 U.S.C. §§ 1114, 1125(a), and 1125(c)(1). It also asserts claims under the

Minnesota Deceptive Trade Practice Act, M.S.A. § 325D.44 et seq., as well as common

law claims of unfair competition. The Court has jurisdiction over the federal claims

pursuant to 15 U.S.C. § 1121 and 28 U.S.C. § 1338. It has jurisdiction over the state law

claims pursuant to 28 U.S.C. § 1367.

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A. There Is Likely Confusion Of Association Or Sponsorship From The

Use Of CRISTALINO

In the Eighth Circuit a series of non-exclusive factors determine whether a

likelihood of confusion exists: (1) the strength of the infringed mark; (2) the similarity

between the parties’ marks; (3) the competitive proximity of the parties’ products; (4) the

infringer’s intent; (5) evidence of actual confusion; and (6) whether the kind of product,

its costs and conditions of purchase, allow the purchaser to eliminate the likelihood of

confusion that would otherwise exist. SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1090-91

(8th Cir. 1980); Edina Realty v. The MLSonline.com, No. 04-4371, 2006 U.S. Dist.

LEXIS 137758, *11 (D. Minn. March 20, 2008). The evidence of trademark

infringement is overwhelming.

1. CRISTAL Is A Famous, Very Strong Mark

Roederer has sold CRISTAL champagne in the United States since 1937. This

prestige champagne, one of the best champagnes in the world, dates its history to 1876

when it was created at the request of Alexander II, the Tsar of Russia. Roederer owns,

among others, two federal trademark registrations on CRISTAL CHAMPAGNE with

Design and CRISTAL CHAMPAGNE, Registration Nos. 662,343 and 1,163,998,

respectively. Roederer’s trademark rights are incontestable. It has the exclusive rights to

use the mark. 15 U.S.C. § 1115(b). Roederer is also the owner of all common law rights

to the mark CRISTAL. It has used the mark in the United States to distinguish CRISTAL

champagne from all others for more than seventy years. First Bank v. First Bank Sys.,

Inc., 84 F.3d 1040, 1044 (8th Cir. 1996).

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CRISTAL champagne and the CRISTAL brand are a part of the popular culture of

the United States. CRISTAL is a symbol of excellence, luxury, and prestige. CRISTAL

champagne has been associated with events of significance and importance for decades,

dating back at least to the 1970’s, whether they are meetings of heads of state,

Presidential dinners, or the gift to winners of world-class sporting events. CRISTAL has

been the champagne of choice, unofficially endorsed by celebrities of all kinds for

decades. Because it is a cultural icon, it has been included in countless news articles and

the stories of popular novels, it has “appeared” in dozens of popular movies and

television shows, and is one of the most frequently mentioned trademarks in popular

music.

The extensive and unsolicited use of the CRISTAL brand in the national media

and the unpaid endorsements of celebrities and public figures of all kinds is proof of the

strength, renown, and fame of the mark. Hainline v. Vanity Fair, Inc., 301 Fed. Appx.

949, 952 (Fed. Cir. 2008); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 1374 (Fed. Cir. 2005). CRISTAL, like ROLLS-

ROYCE, is an undoubtedly famous mark even though it advertises little and sells in

limited quantities. See 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair

Competition, § 24:43 (4th ed. 2009) (hereinafter “McCarthy”).

The fame and renown of CRISTAL is a dominant factor in the likelihood of

confusion analysis. Hainline, 301 Fed. Appx. at 952; Palm Bay Imports, 396 F.3d at

1374; Recot, Inc. v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). Here, “all doubt as to

whether confusion, mistake, or deception is likely” must be resolved against the second
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comer, CRISTALINO. Nina Ricca, S.A.R.L. v. E.T.F. Enters, Inc., 889 F.2d 1070, 1074

(Fed. Cir. 1989). The fame and renown of CRISTAL creates the opportunity to trade on

its goodwill and poach on the commercial magnetism of the brand. See James Burrough,

540 F.2d at 277.

2. CRISTALINO Creates A Strong Association With CRISTAL

The word CRISTAL is not an English word; it has no meaning in that language. It

is also a word with no relationship, even if “Englishized” as “crystal,” to the field of

sparkling wine. CRISTAL is an arbitrary and inherently distinctive mark in the field of

champagne and sparkling wine. Arbitrary marks are entitled to the broadest scope of

protection. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).

The name CRISTALINO is the word “cristal” with the suffix “ino.”

CRISTALINO is a direct reference to CRISTAL, appropriating to itself some of the

meaning of CRISTAL. CRISTALINO means to pertain to, to have the properties of, to

be the lesser of, or to be the feminine counterpart of CRISTAL. The very name

CRISTALINO associates itself with CRISTAL. The highly distinctive common

dominant element, CRISTAL, underscores the similarity of the marks. Palm Bay

Imports, 396 F.3d at 1372-73. The fact the common distinctive element is also the

common root word of both marks enhances the similarity and the likely confusion.

Analytic Recruiting, Inc. v. Analytic Resources, LLC, 156 F. Supp. 2d 499, 545 (E.D. Pa.

2001).

The CRISTALINO name is the dominant element of the label of the

CRISTALINO bottle. The bottle’s label is the most important means of communication
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with the consumer. In the words of CIV, “Better packaging means more impulse

purchases.” Here, in addition to the prominent use of the name CRISTALINO, the label

is of a nearly identical color, has similar font, and is nearly the same shape and size as the

CRISTAL label. The label is completely consistent with the false meaning of the name

itself, that the CRISTALINO product pertains to, has the properties of, is the lesser of, or

is the feminine counterpart of CRISTAL. The label conveys the false commercial

impression that the CRISTALINO product is associated with, sponsored by, or is in some

way connected with CRISTAL sparking wine, being the famous champagne. See, Duluth

News-Tribune v. Mesabi Publ’g Co., 84 F.3d 1093, 1097 (8th Cir. 1996) (overall

commercial impression includes all that the consumer is likely to perceive, including

designs, fonts, and colors); Luigino’s Inc. v. Stouffer Corp., 170 F.3d 827, 830 (8th Cir.

1999) (may be assessed by considering the trade dress of the products); Woodroast Syst.,

Inc. v. Rest. Unlimited, Inc., 793 F. Supp. 906, 915 (D. Minn. 1992) (similarity is

determined by examining the marks as a whole, including sight, sound, and overall

impression).

3. Champagne And Cava Are In The Same Product Category:

Sparkling Wine

Likelihood of confusion, not direct competition, is the test of trademark

infringement. Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 399 (8th Cir. 1987).

One common merchandising practice with which consumers are familiar, applied in

industries as varied as cars, designer fashion, and wines, is the use of a high-end brand of

renown to enhance the value of the popularly priced offering from the same company. In

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short, consumers are experienced with the fact there are families of products from the

same company selling across a range of price. See, Palm Bay Imports, 396 F.3d at 1376

(even sophisticated purchaser is aware of the merchandising practice of champagne

houses offering different products under similar marks).

Roederer uses this merchandising technique. All of its champagne products are

labeled to convey the message that they all come from the maker of the prestige

champagne CRISTAL. It does so by taking elements from the CRISTAL label – which

has been essentially unchanged since it was first created in 1876 – and applying them to

the label of its other products. These elements include the use of color, font style, the

name LOUIS ROEDERER, and the Louis Roederer Monogram.

This same merchandising technique is used by Roederer in relation to its

California sparkling wine products, conveying the message that the different product

comes from the family of Roederer, the maker of CRISTAL. Importantly, when

Roederer did not want its reputation and the reputation and image of CRISTAL

associated with a sparkling wine product it produced, it was careful to brand the product

under a different name and have very different labeling.

Here, the parties’ marketing channels are identical, and they advertise in the same

publications. Likely confusion of false association and sponsorship is “increased by

‘[c]onvergent marketing channels’ [and] ‘similarity in advertising.’” Vigneron Partners,

LLC v. Woop Woop Wines, No. C 06-00527 JF, 2006 U.S. Dist. LEXIS 28407, *15-*16

(N.D. CA 2006) (citations omitted). While CRISTALINO will be found in more off-

premises stores, because it is produced in much greater quantities than CRISTAL, it will
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be found in all or nearly all of the off-premises stores that sell CRISTAL. As other courts

have noted, “high-end champagne and less-expensive sparkling wines are marketed in the

same channels of trade to the same consumers.” Palm Bay Imports, 396 F.3d at 1376.

Discounts stores, such as COSTCO, sell CRISTAL champagne as well as $10

sparkling wines. Restaurant wine lists typically offer a wide range of prices, and off-

premises retail stores sell champagne and sparkling wine (and their still wine products)

across the full price spectrum. The producers follow the same practice. The price range

of champagne and sparkling wine products sold under the Roederer name ranges from

hundreds of dollars per bottle to twenty dollars per bottle. The price range of products

sold by other wine producers is even greater. Moreover, the sale of both champagne and

other sparkling wine products by the same or related companies is common.

Consumers have heterogeneous needs, purchasing champagne and sparkling wines

across the price spectrum, depending on the need and the occasion. The consumer is

likely to believe that Defendants’ inexpensive sparkling wine product with the name

CRISTALINO, being a direct reference to CRISTAL, on a gold label of nearly identical

color, shape and size with lettering in a similar font style as the label of CRISTAL is

from the same family as the maker of CRISTAL. Defendants convey the false message

that they are part of the CRISTAL family: that their product is associated with, sponsored

by, or in some way connected with the maker of the famous CRISTAL champagne. Real

News, 2008 U.S. Dist LEXIS 41457 at *71-*72 (associational confusion); Freischmann

Distilling Corp. v. Maier Brewing Co,, 314 F.2d 149, 159 (9th Cir. 1963) (the fact the

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products sold under similar names do not directly compete enhances the likely confusion

where the products are both sold in the same industry).

4. The Conditions Of Purchase Enhance Likely Confusion Of

Association Or Sponsorship

The parties’ products are sold in the same retail locations. They are on the same

wine lists of restaurants, clubs, and hotels, and they are in the same section, the

“Champagne and Sparkling Wine” section, of off-premises retail stores. The fact they

are typically not sold side-by-side enhances the likely confusion. It is more likely

consumers will believe the two sparkling wine products come from the same source

because they are not directly competitive products. Lever Bros. Co. v. Winzer Co. of

Dallas, 326 F.2d 817, 818-19 (C.C.P.A. 1964); McCarthy § 24:45. The fact that

CRISTALINO promotes itself as being of “good quality for the price” further enhances

the likely confusion because the message is consistent with the high quality associated

with the CRISTAL brand. See Morningside Group Ltd. v. Morningside Capital Group,

L.L.C., 182 F.3d 133, 142 (2nd Cir. 1999); McCarthy § 24:15.

Furthermore, because the products are not sold side-by-side any comparison of the

CRISTALINO product labeling with the CRISTAL product labeling is inconvenient at

best. In other instances, when only CRISTALINO is for sale, it will be impossible.

When trademark infringement is the mistaken belief of association or sponsorship, the

degree of care taken in purchasing “is of diminished importance.” Frosty Treats, Inc. v.

Sony Computer Ent., 426 F.33d 1001, 1010 (8th Cir. 2005). Even a careful purchasing

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decision “rarely reduces the risk of sponsorship confusion.” King of the Mountain Sport

v. Chrysler Corp., 185 F.3d 1084, 1092 (10th Cir. 1999).

5. The Labeling Of CRISTALINO Is Not Fair Competition

Defendants were under the duty to avoid, not enhance, likely confusion of

association and sponsorship. Basic principles of fair competition require no less.

Wesley-Jessen Div. of Schering Corp. v. Bausch & Lomb, Inc., 698 F.2d 862, 867 (7th

Cir. 1983). Yet, here all of the changes to the CRISTALINO label as it evolved from its

first introduction in the United States were to make it more like, not distinct from,

CRISTAL champagne. In a short span of time, an ornate, completely distinct label for

the product named CRISTALINO JAUME SERRA evolved to mimic the label of

CRISTAL for a product now named CRISTALINO. Vigneron Partners, 2006 U.S. Dist.

LEXIS 28407 at *26 (the defendant’s conduct after initial use is relevant to show intent).

Indeed, the nearly identical names CRISTAL and CRISTALINO combined with

the high degree of similarity between the labels makes it possible for persons to sell

CRISTALINO as a counterfeit of CRISTAL. An instance of this counterfeiting was

discovered in Detroit. The “ino” is covered and a “Roederer” sticker is added to the

bottle, transforming CRISTALINO into CRISTAL.

Eliminating any notion of coincidence, when Carrión years later introduced its

CRISTALINO ROSE product, all of the close similarities to the CRISTAL label were

continued, including mimicking the copper-like color of the CRISTAL ROSE label.

Courts are properly suspicious when goods are dressed to be like the successful product

of others. Johnson & Johnson v. Quality Pure Mfg., 484 F. Supp. 975, 980 (D.N.J.
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1979). The conduct reveals the infringers true opinion, namely that confusion is likely.

Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049, 1057 (8th Cir. 2005).

6. The Evidence Demonstrates Actual Confusion

Survey evidence is evidence of actual confusion. Mutual of Omaha Ins., 836 F.2d

at 400. “[B]ecause manifestations of actual confusion serve as strong evidence of a

likelihood of confusion, and may, in fact, be the best such evidence [the] survey should

be given substantial weight unless seriously flawed.” Stuart Hall Co. v. Ampad Corp., 51

F.3d 780, 790 (8th Cir. 1995).

Here, the survey evidence shows that 23% of consumers of imported sparkling

wine of the price range at which CRISTALINO is sold (both off premises and on

premises) with an awareness of CRISTAL were confused, mistaken, or deceived. This is

a significant level of confusion. McNeilab, Inc. v. Am. Home Prods. Corp, 501 F. Supp.

517, 525-27 (S.D.N.Y. 1980) (23% confusion); Exxon Corp. v. Texas Motor Exchange,

Inc., 628 F.2d 400, 507 (5th Cir. 1980) (15% is strong evidence of likelihood of

confusion); RJR Foods Inc. v. White Rock Corp., 603 F.2d 1058, 1061 (2nd Cir. 1979)

(15-20% probative of likely confusion).

The survey properly tested for infringement. The reputation and renown of the

CRISTAL brand only resides in persons with an awareness of the brand. Testing whether

there is a likelihood that consumers generally familiar with the senior mark would be

likely, upon seeing the junior mark, to believe the junior mark is in some way related to,

or connected or affiliated with, or sponsored by, the senior mark is the proper test. James

Burrough Ltd., 540 F.2d at 274; The Elizabeth Taylor Cosmetics Co. v. Goutal, 673 F.
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Supp. 1238, 1248 (S.D.N.Y. 1987) (“The proper test for likelihood of confusion is not

whether consumers would be confused in a side-by-side comparison of the products, but

whether confusion is likely when a consumer, familiar to some extent with the one

party’s mark, is presented with the other party’s goods alone.”). The consumer survey

evidence is significant.

In summary, the use of the name CRISTALINO on the inexpensive sparkling wine

product of Defendants creates a likelihood of confusion of association with or

sponsorship by the maker of the famous sparkling wine, CRISTAL champagne.

CRISTAL is a famous mark, making it exceedingly strong. The infringing mark is not

only similar, it makes a direct association in meaning with its root, CRISTAL. The fact

the products are not directly competitive and the normal conditions of purchase enhance

the likely confusion. The Defendants’ marketing tactics are at best suspicious. A well-

conducted consumer survey confirms the likelihood of confusion. There is trademark

infringement under 15 U.S.C. §§ 1114 and 1125(a) and M.S.A. § 325D.44 et seq.

B. There Is A Likelihood Of Dilution Because Of The Name CRISTALINO

The owner of a famous and distinctive mark is entitled to protection from the use

of another mark that is likely to cause dilution by blurring, regardless of the presence or

absence of actual or likely confusion, or competition, or actual economic injury. 15

U.S.C. § 1125(c)(1). Fame is present when the mark “is widely recognized by the

general consuming public of the United States as a designation of source of the goods of

the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). CRISTAL has been widely recognized

throughout the United States as the name of a prestige champagne. It has been a part of
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our popular culture, mentioned in books and the public media and endorsed as the

champagne of choice by celebrities for decades dating back at least to the 1980’s.

CRISTAL is an arbitrary mark in connection with sparkling wine; it is very

distinctive. That distinctiveness is “whittled away” by the name CRISTALINO. Indeed,

the name itself, with the root “cristal” and the suffix “ino,” causes association with and

misappropriates to itself characteristics of the famous brand. See Nike, Inc. v. Nikepal

Intern., Inc., No. 2:05-CV-1468, 2007 U.S. Dist. LEXIS 66686, *19-*20 (E.D. Cal. Sept.

10, 2007) (NIKEPAL is a composite of the word “Nike” and the term of affinity, “pal”

and is nearly identical to NIKE).

An appreciable number of consumers in fact associate CRISTALINO with the

famous brand CRISTAL while (apparently) recognizing that the two products come from

different sources. Examples include, “If you can’t afford to sip Cristal on a nightly basis

(as the laws of hip hop dictate) go for Cristalino instead” and “So my Christmas gift from

Amy H. was a bottle of Cristal(ino). Seriously, the champagne is called Cristalino.”

These, and many, many more instances show the loss of distinctiveness to the famous

CRISTAL brand from this association to another similarly named product. This is likely

dilution by blurring. Starbucks Corp., 2009 U.S. App. LEXIS 26300 at *21-*22.

III. ATTORNEYS’ FEES ARE WARRANTED BECAUSE THIS IS AN

EXCEPTIONAL CASE

The Court may award reasonable attorneys’ fees to the prevailing party in an

exceptional case. 15 U.S.C. § 117(a); Scott Fetzer Co. v. Williamson, 101 F.3d 549, 555

(8th Cir. 1996); Amana Society v. Gemeinde Brau, Inc., 417 F. Supp. 310 (N.D. Iowa

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1976), aff’d, 557 F.2d 638 (8th Cir.), cert. denied, 434 U.S. 967 (1977). A “trademark

case is exceptional where the district court finds that the defendant acted maliciously,

fraudulently, deliberately, or willfully.” Watec Co. v. Liu, 403 F.3d 645, 656 (9th Cir.

2005); Minn. Pet Breeders v. Schell & Kampeter, 846 F. Supp. 506, 519-20 (D. Minn.

1993); see also, McCarthy §30:99-100.

As the second comer (entering the United States market some fifty years after

CRISTAL), Defendants’ duty was to avoid infringing on the trademark rights of

Roederer. Wesley-Jessen Div. of Schering Corp, 698 F.2d at 867. Instead, the

Defendants acted deliberately and willfully to move closer and closer to CRISTAL,

reaping the rewards of trading on the reputation and image of the famous brand.

Roederer issued its cease and desist demands on Defendants in June 2002 and

commenced opposition proceedings before the Trademark Trial and Appeal Board

against the registration of CRISTALINO as a trademark in January 2003. There was no

change in Defendants’ infringing conduct, affirming the deliberate and willful nature of

the infringement. An award of Roederer’s reasonable attorneys’ fees is appropriate. See,

BASF Corp. v. Old World Trading Co., 41 F.3d 1081, 1099 (7th Cir. 1994) (awarding

fees based on defendant’s deliberate false advertising); Aetna Health Care Systems, Inc.

v. Health Care Choice, Inc., 231 U.S.P.Q. 614 (N.D. Okla. 1986) (holding that the willful

adoption of plaintiff’s mark for substantially identical services after notice of plaintiff’s

rights and objections created an exceptional case and awarding plaintiff attorneys fees).

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IV. A PERMANENT INJUNCTION IS A PROPER REMEDY

A permanent injunction may issue after weighing (1) the threat of irreparable harm

to the moving party; (2) whether the harm can be remedied at law; (3) the balance of

harm; and (4) the public interest. eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391

(2006).

The likelihood of damage to reputation is by its nature “irreparable.” Int’l Kennel

Club of Chicago, Inc. v. Mighty Star, Inc. 846 F.2d 1079, 1091 (7th Cir. 1988); General

Mills, 824 F.2d at 625. Absent an injunction, the public’s experience with a product

associated with CRISTAL will no longer be in the exclusive control of Roederer. The

reputation and image that Roederer has spent generations creating will now be subject to

the actions of another. In addition, without an injunction the public will continue to be

confused, deceived, and mistaken by the false message that CRISTALINO is associated

with or sponsored by the maker of CRISTAL.

Indeed, the irreparable harm to Roederer is broader than the loss of exclusive

control over the reputation and image of the CRISTAL brand. The injury will be

incurred across the full line of Roederer champagne products, all of which otherwise

benefit from the association with the flagship brand, CRISTAL.

The requested injunctive relief is specifically directed at the harm. A permanent

injunction against the use of the name CRISTALINO permits the Defendants to continue

to produce, market, and sell their sparkling wine product. Only the name must change.

And, they cannot be heard to complain of the expense. It was their duty to avoid, not

create the likely confusion. Wesley-Jessen, 698 F.2d at 867.

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Infringement of trademarks is inherently contrary to the public interest. Am. Dairy

Queen Corp. v. New Line Prods., Inc. 35 F. Supp. 2d 727, 733 (D. Minn. 1998). The

interests of the consuming public are paramount. James Burrough Ltd., 540 F.2d at 274.

Permanent injunctive relief is also the proper remedy for likely dilution by

blurring. 15 U.S.C. § 1125(c)(1). Absent a permanent injunction, Roederer would face

an escalating erosion of its famous mark, CRISTAL. The remedy for likely dilution of a

famous mark is a permanent injunction. Starbucks Corp., 2009 U.S. App. LEXIS 26300

at *9.

V. CONCLUSION

The CRISTALINO name trades on and dilutes the famous brand CRISTAL. An

appreciable number of consumers falsely believe because of the name CRISTALINO that

an inexpensive sparkling wine is the low-priced offering of the makers of the premier

champagne, CRISTAL. A different appreciable number of consumers, knowing the

source of the products are different, associate the names CRISTALINO and CRISTAL,

diluting the distinctiveness of the famous brand. In both instances, the infringing product

unjustly benefits from the fame and renown of CRISTAL. The Defendants’ marketing

demonstrates the intent to take advantage of these associations, to enhance rather than

mitigate the public’s confusion. This is an exceptional case. Roederer is entitled to the

relief it requests, including a permanent injunction against the use of the name

CRISTALINO.

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 Case 0:06-cv-00213-JNE-SRN Document 226 Filed 01/04/10 Page 18 of 18

Respectfully submitted,

Dated: January 4, 2010 s/Allen W. Hinderaker

Allen W. Hinderaker (# 45287)
John A. Clifford (# 134181)
Heather J. Kliebenstein (#337419)
MERCHANT & GOULD P.C.
3200 IDS Center
80 South Eighth Street
Minneapolis, MN 55402–2215
Telephone: 612.332.5300
Facsimile: 612.332.9081

Attorneys for Champagne Louis Roederer

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