In Houston's high-end food circles, Diane Roederer is known for her black truffles from Spain. She supplies the pricey delicacies to some of the city's top chefs, who use them to turn mundane dishes into decadent delights.
But Champagne Louis Roederer of Reims, France, contends the Houstonian is trying to cash in on its good name. The company, which sells sparkling wine and champagne and is probably best known for Cristal, claims in a lawsuit that Diane Roederer and her brand, Roederer USA, are infringing on its well-known trademark.
Diane Roederer, who also goes by her married name, Diane Delagrange, scoffed at the allegations in a response to the lawsuit that she filed earlier this month. She sells primarily imported foods like truffles through her company, DR Delicacy.
Jacqueline Lipton, law professor and co-director of the Institute for Intellectual Property and Information Law at the University of Houston Law Center, said there is no absolute test for trademark infringement. But there are several factors that courts consider, she said, such as whether the names and logos are similar. Then there is the question of whether there is market overlap.
"The bottom line is whether the consumer is likely to be confused," Lipton said.
The fact that both companies orbit the world of high-status, high-price imports might lead a consumer to think they might be connected, she said. It would be an easier defense if the food importer was, say, in the business of selling cheap pizzas.
"No one will confuse a cheap pizza joint with expensive French champagne," Lipton said.
Diane Roederer declined to comment for this story, citing the advice of her lawyers at Thompson & Knight.
John Clifford, the Arizona lawyer representing Champagne Louis Roederer, said he would not comment either, citing a desire to try the case in court rather than in the press.
According to the lawsuit, Diane Roederer applied in 2014 to the U.S. Patent and Trademark Office to register Roederer USA as its trade name to supply imported food, including chocolate, truffles, herbs and oils. The French company opposed the application. Sometime later, Roederer began to use the name Roederer USA to launch her new business, the lawsuit claims.
The champagne maker, which was founded in 1776, asserts that the Roederer USA registration is likely to cause confusion among potential customers looking for its products, including a line of wine sold in the U.S. under the name Roederer Estate.
Champagne Louis Roederer pointed out - and Diane Roederer agreed in her response to the case - that she promotes her products by hosting promotional events at fancy restaurants, including many that feature Louis Roederer-made champagne or wine.
Both sides also agree that for at least one of her events, Diane Roederer asked the local distributor of Champagne Louis Roederer to supply the beverages.
Events have helped make Diane Roederer a player in Houston's culinary scene.
In January, DR Delicacy supplied the truffles for a truffle cook-off featuring 20 of Houston's top restaurants. The event benefitted the Houston chapter of Les Dames D'Escoffier, a philanthropic society of women in the food, beverage and hospitality industry. Tickets ranged from $150 to $250, and proceeds went to scholarships.
She also highlights her own French heritage. In a story last year about how chefs are using truffles in their dishes, Diane Roederer told the Chronicle she grew up in Strasbourg in the Alsace region of France, and is a cousin of the famous French champagne family.
Champagne Louis Roederer alleges that Diane Roederer's talk of her family connection to the press and to people in the food and wine industry is an effort to cash in on its reputation by making it appear the French champagne maker was somehow affiliated with her new venture.
It's not uncommon for people to use their last name in marketing a product, said John Keville, an intellectual property trial lawyer at Houston's Winston & Strawn. But the question before the court is whether there is an effort to create a false impression, he said. It doesn't work in Diane Roederer's favor to say she is kin to people at the famous French company if she is implying she has a tie when she doesn't.
"But if she is just saying, 'I have this last name because I'm related to these people' and not using it to make a connection or sponsorship, that's OK," he said.
Nuance is important, he said.
So is the sophistication of buyers, Keville said. Courts generally assume that sophisticated buyers are more savvy and less likely to be confused, he said.
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