On May 4, 2016, Italian luxury shoe designer Salvatore Ferragamo SpA filed a trademark infringement lawsuit against former NFL Quarterback Vince Ferragamo and his award-winning Tenuta di Ferragamo vineyard. In its complaint, the fashion company alleges that use of the Ferragamo name is trademark infringement and dilutes their high-end fashion design house’s mark. The fashion company claims that they once sold wine products in Italy in the 1980s, discontinued its production, and then obtained a valid U.S. copyright when they relaunched in the 2000s in the fashion industry. Factually, it is unclear if the company ever or is currently selling wine in the U.S.
On May 31, 2016, Ferragamo fired back, criticizing the fashion company for overzealous trademark enforcement and trying to prevent him from using his own name to sell a product in a completely different industry. In his preliminary response letter on Tuesday, Ferragamo asserts there could be no possible consumer confusion as one company sells shoes, the other wine. He argues the fashion company has pled no facts to support any trademark deception. Further, attorneys for Ferragamo question the curious move of filing suit in New York since Ferragamo’s vineyard is in California and the fashion company is in Italy with no principal place of business in New York. In the alternative, Ferragamo contends that even if their trademark claims were valid they waited too long with the knowledge of Ferragamo’s vineyard to file suit; thus, are barred by the doctrine of latches. Finally, the former Los Angeles Rams Quarterback asserts it would be simply unfair to prevent him from using his own name in his own small business.
Attorneys for the fashion company quickly responded on Wednesday noting that they have a valid and registered trademark and advised Ferragamo and his attorneys to file an answer to the lawsuit.