Rare Breed Distilling has filed a trademark infringement action in a Kentucky federal court alleging that Jim Beam Brands’ use of “Give ‘Em the Bird” in connection with its Old Crow bourbon whiskey “is likely to confuse and deceive consumers and purchasers of bourbon whiskey products.” Rare Breed Distilling LLC v. Jim Beam Brands Co., No. 11-292 (W.D. Ky., filed May 13, 2011). Rare Breed has apparently used “Give Them the Bird,” which evolved into “Give ‘Em the Bird,” since 2006, in connection with its Wild Turkey® bourbon whiskey products. The plaintiff alleges that Jim Beam adopted identical marks for use and filed a still pending application to register the mark in March 2010. According to the complaint, Jim Beam has refused to acknowledge Rare Breed’s prior rights to the mark and continues to use it.

Alleging federal trademark infringement and unfair competition, and common law unfair competition, the plaintiff seeks an order enjoining Jim Beam from using Rare Breed’s mark “and any other marks that are confusingly similar to Plaintiff’s marks in connection with Old Crow bourbon whiskey or any other beverage alcohol product.” The plaintiff also seeks an order requiring Jim Beam to destroy infringing material, to provide an accounting of all sales related to its use of the mark and to abandon its application to register the mark. Rare Breed seeks actual, treble, exemplary, and punitive damages.

Earlier this year, a federal court in New York dismissed a complaint filed by a tequila maker which sought a court order declaring that its use of a crow image, “the Cuervo Bird Design,” did not infringe Jim Beam’s federal trademark rights. Tequila Cuervo La Rojena, S.A. de C.V. v. Jim Beam Brands Co., No. 10-203 (S.D.N.Y., decided February 8, 2011). According to the court, Jim Beam offered to stipulate that it would not sue Cuervo for infringement, and this made the declaratory judgment action moot. Jim Beam apparently owns four trademarks depicting crows and entered a contract with Cuervo in 1997 under which Cuervo agreed to limit its use of the Cuervo Bird Design. In 2008, Jim Beam accused Cuervo of violating those limits and sued it for breach of contract in state court. That action, which seeks royalties, remains pending.

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For decades, manufacturers, distributors and retailers at every link in the food chain have come to Shook, Hardy & Bacon to partner with a legal team that understands the issues they face in today's evolving food production industry. Shook attorneys work with some of the world's largest food, beverage and agribusiness companies to establish preventative measures, conduct internal audits, develop public relations strategies, and advance tort reform initiatives.