A New York federal court has allowed Lanham Act claims for the Stolichnaya trademark to proceed in a long-running case between a Russian state-chartered company and several international beverage companies. Fed. Treasury Enter. Sojuzplodoimport v. SPI Spirits Ltd., No. 14-712 (U.S. Dist. Ct., S.D.N.Y., order entered August 25, 2014). Federal Treasury Enterprise Sojuzplodoimport (FTE), owned by the Russian Federation, alleges that it owns the Stolichnaya trademarks, but SPI Spirits purports to be the private successor to the state-owned company that owned the trademarks before the Soviet Union dissolved and several public entities became private companies. The Second Circuit previously held that FTE lacked standing because it was neither an assign nor legal representative under the Lanham Act. Since that ruling, the Russian Federation assigned its rights to the Stolichnaya trademark to FTE, and the New York federal court has found that the assignment cures FTE’s previous lack of standing issue.…
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Prichard’s Distillery Inc., maker of Benjamin Prichard’s Double Barreled Bourbon, has filed a lawsuit against Sazerac Co. alleging that the liquor manufacturer has violated its trademark in “double barreled” by selling A. Smith Bowman Limited Edition Double Barrel Bourbon Whiskey and Buffalo Trace Experimental Collection Double Barreled, a bourbon. Prichard’s Distillery Inc. v. Sazerac Co., No. 14-1646 (U.S. Dist. Ct., M.D. Tenn., filed August 11, 2014). Prichard’s claims that it has owned a trademark on the use of “double barreled” in liquor sales since 2002, and the term comes from Prichard’s distilling process, which involves aging the bourbon in one barrel, diluting it to a lower proof, then aging it in a second barrel to reinforce the flavor. The company seeks an injunction preventing Sazerac from using “double barreled” on its products as well as damages multiplied due to Sazerac’s “willful and wrongful conduct.” Issue 535
John Wayne Enterprises (JWE) has filed a complaint in California federal court seeking declaratory judgments determining that its usage of the “Duke” trademark is not likely to cause confusion with the trademarks owned by Duke University, which has challenged several JWE trademark applications over the last decade. John Wayne Enterprises, LLC v. Duke Univ., No. 14-1020 (C.D. Cal., filed July 3, 2014). JWE intends to sell bourbon under the name Duke, a nickname John Wayne used since his childhood and which fans still use to affectionately refer to him. Duke University has repeatedly challenged JWE’s past trademark applications by filing notices of opposition and a petition for cancellation of JWE’s owned “Duke” trademarks, alleging that the marks suggest a false connection to the university, would likely confuse consumers and dilute the university’s trademarks. JWE seeks two declaratory judgments to determine that its “Duke” mark does not create any likelihood of…
The Beech-Nut Nutrition Co. has filed a complaint against an organic baby-food maker seeking a declaration that Beech-Nut has not infringed any of Plum PBC’s trademarks and that the trademarks Plum has asserted to the word “JUST” and certain phrases are invalid. Beech-Nut Nutrition Co. v. Plum PBC, No. 14-0791 (N.D.N.Y., filed June 30, 2014). According to the complaint, Plum sent Beech-Nut a cease-and-desist letter in June 2014 shortly after Beech-Nut launched a new line of whole fruit and vegetable foods for babies including the word “just” on product labels and advertised them under a promotional campaign “This is not baby food” and “This is real food for babies.” The letter allegedly demanded that Beech-Nut stop infringing Plum’s “JUST” trademark and using the promotional phrases. Beech-Nut contends that (i) the word “just” is simply descriptive and generic; (ii) Plum does not use the trademark symbol beside the word on its product…
Ice cream truck franchiser Mister Softee Inc. has filed a motion for a preliminary injunction in a lawsuit alleging trademark infringement and violation of a non-compete covenant against former franchisee Dimitrios Tsirkos, who converted his 16 Mister Softee trucks to Master Softee trucks and began selling his own ice cream out of them at the beginning of the 2014 ice cream truck season. Mister Softee of Queens Inc. v. Tsirkos, No. 14-1975 (S.D.N.Y., motion filed April 25, 2014). Mister Softee ended Tsirkos’ franchise contract after he refused to pay $74,000 in franchise royalties for his trucks, but Tsirkos allegedly adjusted the logo on his trucks, started his own soft-serve depot and began selling ice cream in New York City anyway. Tsirkos has filed a motion opposing the injunction, and a hearing is set for May 15, 2014. See Law360, May 2, 2014. See New York Daily News, May 1, 2014. …
Texas has filed a motion to intervene in Alamo Beer Co. LLC’s trademark infringement suit against Old 300 Brewing LLC, asserting that the state has the rights to the “Alamo” mark. Alamo Beer Co. LLC v. Old 300 Brewing LLC, No. 14-285 (W.D. Tex., motion filed April 28, 2014). Filed in March 2014, Alamo Beer’s original complaint alleged that Old 300 Brewing (doing business as Texian Brewing Co.) infringed on its mark by using the silhouette of the Alamo on Texian beer labels, which image Alamo Beer has used and federally registered as a trademark for beer labeling since 1997. Texas argues that it has registered and common law rights to the use of the Alamo Mission’s likeness in commerce. In 2013, the state began registering the Alamo silhouette in a variety of categories, including blankets, apparel, jewelry, leather goods, digital media, packaged foods, and museum services. In the category…
The University of California Davis, has reportedly filed a motion in California state court to dismiss the breach of contract suit that the California Strawberry Commission filed in October after it learned that the university may stop breeding and selling strawberry germplasm to farmers. UC Davis has developed and sold its strawberry germplasm at low royalty rates to the commission for several decades through a research program headed by two professors. According to the commission’s complaint, the professors announced their intention to resign in 2012 and take their research to a private company, raising the cost of royalties and limiting the sales to select strawberry growers, and as a result, the university notified the commission of its intention to shutter the program. In its complaint, the commission argued that its growers have directly funded the university program, so they are entitled to receive the new strawberry varieties that the professors…
A federal court in California has granted a motion for sanctions filed by Jackson Family Wines, which brought an infringement action against Diageo North America; an adverse inference instruction will be given to the jury during trial, and the plaintiff will be able to recover the costs of its efforts to secure a Diageo marketing department employee’s documents, destroyed while the lawsuit was pending. Jackson Family Wines v. Diageo N. Am., Inc., No. 11-5639 (N.D. Cal., order entered February 14, 2014). At issue in the litigation is the alleged infringement of Jackson’s La Crema wine by Diageo’s Crème de Lys wine brand. The employee whose laptop was “imaged” outside the firm after she temporarily left Diageo’s employ was, in Diageo’s words, “the conduit between Diageo’s marketing team and Northstar [Research Partners, LLC], the third-party market research company” that conducted focus groups for the selection of the Crème de Lys brand.…
Lindt & Spruengli AG is once again facing trademark litigation over its gold-wrapped chocolate candy, this time for its “Teddy,” which Haribo GmbH claims infringes its “Gold-Bears” multi-colored gummy bears product. Lindt was unable to secure a European Union (EU) trademark for its chocolate bunny, but was able to stop Hauswirth in Austria from manufacturing Easter bunnies resembling its bunny. Lindt did not succeed in similar litigation against Reigelein in Germany. Additional information about the EU Court of Justice ruling rejecting the bunny registration appears in Issue 441 of this Update. Lindt and Haribo apparently agreed to ask a German court to resolve their dispute, and an initial hearing occurred in Landgericht Köln in October 2012. The final hearing is scheduled for December 18. Lindt has reportedly indicated that it specifically avoided marketing its bear shaped candy as a “Gold Teddy,” but Haribo complains that the product nevertheless infringes its…
The Seventh Circuit Court of Appeals has ruled that a district court properly granted Kraft Foods a preliminary injunction against the sale of Cracker Barrel Old Country Store (CBOCS) food products in grocery stores under Kraft’s registered trademark name “Cracker Barrel.” Kraft Foods Group Brands LLC v. Cracker Barrel Old Country Store, Inc., No. 13-2559 (7th Cir., decided November 14, 2013). The court agreed that consumers could be confused when viewing a CBOCS ham label on a grocery store shelf or in a store circular because the words “Cracker Barrel” were larger than “Old Country Store” and Kraft cheeses also carry the “Cracker Barrel” name. While the logos are not the same, the court said that some consumers might believe that both products were made by Kraft. The court weighed the respective harms to both companies and found the potential harm to Kraft greater, because it could be wrongly blamed…
