## Facts

- Taylor Wine Company had sold wine under the “Taylor” name since the late 19th century and held multiple federal “Taylor” trademark registrations used in interstate commerce.
- Taylor Wine invested heavily in advertising, and the “Taylor” name had acquired strong source-identifying significance for wine consumers.
- Bully Hill Vineyards, a separate winery formed in 1970 and owned by Walter S. Taylor (a Taylor family member), initially marketed wine under the “Bully Hill” brand.
- Bully Hill later marketed a line of wines using “Walter S. Taylor” prominently on labels and in advertising, along with terms such as “Original” and references implying ownership of a “Taylor family estate.”
- Bully Hill also used historical-origin references (including an 1878 founding claim) that, in context, suggested continuity with or affiliation to Taylor Wine’s longstanding business.
- Taylor Wine sued for trademark infringement and unfair competition, asserting consumers were likely to believe Bully Hill’s products were connected to Taylor Wine.
- The district court issued a preliminary injunction on affidavits (without trial) broadly barring Bully Hill from using “Taylor” (or colorable imitations) in labeling, packaging, advertising, and promotions; Bully Hill appealed.

## Issues

1. Whether Bully Hill’s prominent use of “Walter S. Taylor” and related family-estate and historical references was likely to cause confusion and thus constituted trademark infringement and unfair competition.
2. Whether a preliminary injunction that categorically barred any use of “Taylor” was impermissibly broad given Walter S. Taylor’s interest in using his own name in business.

## Decision

- The court affirmed the grant of preliminary injunctive relief because Taylor Wine showed a strong mark and a substantial likelihood of confusion from Bully Hill’s labeling and advertising practices.
- The court modified the injunction, holding that a total prohibition on any use of “Taylor” was broader than necessary.
- The case was remanded for entry of a narrower preliminary injunction permitting limited use of Walter S. Taylor’s name only under conditions designed to avoid confusion (including restrictions on prominence and use of clear disclaimers).

## Legal Principles

- A surname can function as a protectable trademark when it has acquired secondary meaning through long use, extensive promotion, and consumer association with a single source.
- Likelihood of confusion may be shown where a competitor uses a similar name prominently on product labels and advertising, particularly when combined with contextual statements suggesting shared origin, sponsorship, or continuity.
- The “own-name” interest in using one’s personal surname in commerce is not absolute; it may be limited when necessary to prevent confusion and protect trademark goodwill.
- Trademark injunctions—especially preliminary injunctions—must be tailored to prevent likely confusion while avoiding unnecessary restraint on non-confusing, legitimate descriptive use, often through disclaimers and limits on display.

## Conclusion

The Second Circuit upheld preliminary relief protecting Taylor Wine’s strong “Taylor” trademarks from likely consumer confusion but required that the injunction be narrowed to allow only carefully restricted, non-misleading use of Walter S. Taylor’s personal name.


Taylor Wine Co. v. Bully Hill Vineyards, Inc., 569 F.2d 731 (2d Cir. 1978)