Defendant Distillery Wins Trademark “Bourbon War”
The U.S. Court of Appeals for the Sixth Circuit has affirmed summary judgment in favor of Peristyle LLC, finding that its use of the term “Old Taylor” falls under the Lanham Act’s fair use defense. Sazerac Brands, LLC, v. Peristyle, LLC, No. 17-5933/5997 (6th Cir., entered June 14, 2018). The “Old Taylor” mark references Colonel Edmund H. Taylor, Jr., who built the Old Taylor distillery in 1887, and although production at the facility ceased in 1972, Sazerac Brands owns the trademark rights to “Old Taylor” and “Colonel E.H. Taylor.” Peristyle was formed to renovate the medieval castle-style building, listed on the National Register of Historic Places as the “Old Taylor Distillery.” Although Peristyle has not resumed bourbon production at the facility, it has used the name “Old Taylor Distillery” in its marketing materials.
Noting that a defendant seeking shelter under the fair use defense must show use of the mark in a “descriptive or geographic sense” and do so “fairly and in good faith,” the court found that the “record confirms that Peristyle never used Old Taylor in a non-descriptive fashion.” As for good faith, the court found, “[a]ll along, the company recognized that the Old Taylor trademark belonged to Sazerac and that Peristyle would have to develop its own name to brand its products. Once it decided on a name, Peristyle’s fliers featured that name: Castle & Key.” The court also ruled that Sazerac’s false advertising claim failed, finding that Peristyle never made a “false or misleading” description or representation of fact.