## Facts

- Banfi Products Corporation, a New York-based wine importer and producer, used the mark COL-DI-SASSO for an Italian red wine first distributed in the United States in 1992.
- Kendall-Jackson Winery, Ltd., a California winery, used the mark ROBERT PEPI COLLINE DI SASSI for a California wine produced beginning in 1990 by a predecessor in interest.
- Banfi’s COL-DI-SASSO was marketed as an “everyday” wine priced about $8–$10, labeled with landscape imagery and statements indicating Italian origin, and sold as a 50/50 Sangiovese-Cabernet blend.
- Kendall-Jackson’s ROBERT PEPI COLLINE DI SASSI was marketed at a higher price point (about $20–$25), labeled with a cream-and-orange, text-only design emphasizing Napa Valley and California production, and marketed as Sangiovese with a small amount of Cabernet.
- Banfi sued seeking a declaratory judgment of noninfringement and, alternatively, asserted federal and common-law claims for trademark infringement and unfair competition/false designation and false advertising.
- Kendall-Jackson counterclaimed under federal and New York law and sought cancellation of Banfi’s federal registration for COL-DI-SASSO.
- After a six-day bench trial, the court issued findings of fact and conclusions of law under Federal Rule of Civil Procedure 52(a).

## Issues

1. Whether Kendall-Jackson’s use of ROBERT PEPI COLLINE DI SASSI was likely to cause consumer confusion with Banfi’s registered COL-DI-SASSO mark under the Polaroid factors, supporting liability under federal and state unfair-competition theories.
2. Whether, given the likelihood-of-confusion determination, the court should enter declaratory relief for Banfi and deny Kendall-Jackson’s counterclaims, including cancellation of Banfi’s registration.

## Decision

- The court found no likelihood of confusion between COL-DI-SASSO and ROBERT PEPI COLLINE DI SASSI under the Polaroid analysis.
- The court directed entry of judgment of noninfringement in favor of Banfi.
- Kendall-Jackson’s counterclaims premised on likely confusion, including its request to cancel Banfi’s federal registration, were rejected.

## Legal Principles

- Likelihood of confusion in the Second Circuit is assessed by balancing the Polaroid factors, evaluating the marks as encountered in the marketplace.
- Similarity is assessed in the marks’ entire commercial impressions, including surrounding words and label presentation; partial linguistic overlap does not control.
- Market context such as price differentials, product positioning, and purchaser sophistication can reduce the risk of confusion even where goods are related.
- The absence of actual confusion, where the products have coexisted in the market, weighs against likely confusion.
- Good-faith adoption and lack of intent to trade on another’s goodwill weigh against a finding of infringement or false designation.
- Without likely confusion, claims for federal and state trademark infringement/unfair competition and requests to cancel a registration based on confusion fail.

## Conclusion

Following a bench trial, the court held that the parties’ wine marks were not likely to be confused in light of differences in overall mark presentation, labeling, price point, and buyer care, and it entered judgment of noninfringement for Banfi while denying Kendall-Jackson’s related counterclaims and cancellation request.


Banfi Prods. Corp. v. Kendall-Jackson Winery, Ltd., 74 F. Supp. 2d 188 (E.D.N.Y. 1999)