According to a news source, Jack Daniel’s Properties, Inc. has filed a trademark infringement action against the companies that produce and sell Popcorn Sutton’s® Tennessee white whiskey. Jack Daniels Props., Inc. v. J&M Concepts, LLC, No. 13-1156 (M.D. Tenn., filed October 18, 2013). The whiskey is apparently named after an Appalachian moonshiner who killed himself rather than serve a federal sentence after he was convicted of offenses relating to moonshine production. The defendants purportedly sold their product first in mason jars, but then switched to bottles that allegedly copy Jack Daniel’s bottle—“a square-shaped bottle with angled shoulders that house a signature and beveled corners, and labeling with a white-on black color scheme, filigree designs, and font style reminiscent of that of the Jack Daniel’s trade dress,” the complaint said. Alleging willful trademark infringement, deceptive trade, fraudulent misrepresentation, and unfair competition, the company seeks injunctive relief, disgorgement of unjust profits and…
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The Mexican brewer that makes Dos Equis® beer and has advertised it with a distinctive campaign since 2007 has brought a trademark and copyright infringement lawsuit against a New Jersey-based company and its president for an advertising campaign that allegedly mimics the brewer’s “Most Interesting Man in the World®” ads. Cervezas Cuauhtémoc Moctezuma, S.A. de C.V. v. KCI, Inc., No. 13-5044 (D.N.J., filed August 22, 2013). According to KCI’s LinkedIn page, the company offers storage area network (SAN) maintenance services. The complaint alleges that defendants have filed trademark applications for and use in a YouTube video the marks “The Most Interesting SAN Architect in the World” and “I Don’t Always Use Third Party Companies When I Buy and Maintain SAN Equipment But When I Do It’s Always Team KCI . . . Stay Convergent My Friend.” This compares with the brewer’s registered marks “The Most Interesting Man in the World” and…
The Second Circuit Court of Appeals, addressing an issue of first impression among the federal appellate courts under the Lanham Act, has affirmed a district court determination that Federal Treasury Enterprise Sojuzplodoimport (FTE) cannot pursue trademark infringement litigation as a “legal representative” of the Russian Federation because while that government designated FTE as its legal representative, it is not legally unable to bring the suit on its own behalf. Fed. Treasury Enter. Sojuzplodoimport v. SPI Spirits Ltd., No. 11-4109 (2d Cir., decided August 5, 2013). So ruling, the Second Circuit held that the Lanham Act’s use of the term “legal representative” requires in addition to an appointment that the appointing entity be unable to appear in the litigation. Another issue addressed was whether FTE was an “assign” of the Russian Federation under a series of documents created since 2002; the court concluded that the documents did not create an assignment.…
Austin-based Amy’s Ice Creams has reportedly filed a trademark infringement lawsuit in a federal district court against Amy’s Kitchen, which makes frozen lunch and dinner entrées with organic and non-genetically modified ingredients. While the two companies have apparently co existed without difficulty for more than 20 years, Amy’s Ice Creams, now with 15 shops throughout Texas, claims that it recently learned about the frozen food company’s plan to launch a line of frozen treats. Amy’s Kitchen is based in California, and its products are sold nationally. Ice cream company founder Amy Simmons reportedly said, “We don’t want them to go into ice cream because there will be obvious confusion.” According to the complaint, the confusion would not be limited to Texas consumers, as the ice cream company “is well known beyond the state. The success of Amy’s [Ice Creams] has been featured in such publications as Inc., Southern Living, Wall…
A firearms company that holds the Tommy Gun™ trademark has brought an infringement action against a company selling its vodka products in 19-inch bottles shaped like Tommy guns. Saeilo Enters., Inc. v. Alphonse Capone Enters., Inc., No. 13-2306 (N.D. Ill., filed March 27, 2013). The plaintiff seeks damages, treble damages, profits, attorney’s fees, and costs under state and federal law, as well as a permanent injunction, cancellation of the vodka maker’s trademark registrations and the destruction of remaining stock. According to a news source, the plaintiff has been aggressive in protecting its brand and, in 2008, sued a company making Tommy gun replicas. It has also apparently trademarked the term “Chicago Typewriter,” a slang expression for the submachine gun. See ABA Journal, April 5, 2013.
In a long-running dispute between Anheuser-Busch LLC and Budějovický Budvar, národini podnik, the European Union’s (EU’s) General Court has determined that a Czech brewery cannot stop the St. Louis-based company from using the “Bud” mark in a number of EU member nations. Budějovický Budvar, národini podnik v. Anheuser-Busch LLC, Nos. T-225/06 RENV, T-255/06 RENV, T-257/06 RENV, & T 309/06 RENV (Gen. Ct., decided January 22, 2013). The matter was before the court on remand from the Court of Justice. The court found that the Czech brewery’s evidence of sales in France and Austria were so small that the company could not show “trade of a sign of more than mere local significance.” The parties were ordered to pay their own costs.
According to a news source, the United Kingdom’s Community Trade Mark Office has determined that the shape of a KitKat® bar, which Nestlé registered as a community trademark in 2006, is valid, thus barring any other confectioners from selling products with a similar shape in the European Union. Nestlé competitor Cadbury makes a similar product and sought to invalidate the mark shortly after it was registered, claiming that the trait was too general to be protected. Cadbury is reportedly considering whether to appeal the ruling. See Huffington Post, January 3, 2013.
Naked Wines LLC has filed an action against Nakedwines.com, Inc. and Groupon, Inc. alleging that they have infringed its “family of erotically-themed marks” including NAKED WINERY®, NAKED WINERY VIXEN®, NAKED WINERY NAUGHTY®, and NAKED WINERY DIVA®. Naked Wines LLC v. Nakedwines. com, Inc., No. 12-01717 (D. Or., filed September 21, 2012). According to the complaint, Oregon-based Naked Wines has used the marks since 2005 and has “developed and maintains customers throughout the United States.” The marks have purportedly “become an asset of substantial value as a symbol of Plaintiff and its products.” Nakedwines.com, located in Napa, California, is allegedly “the U.S. arm of a UK-based, online company that sells and distributes wine from multiple producers.” According to the plaintiff, defendant Nakedwines.com, which is working with various producers to sell 400,000 cases of wine in the United States in 2013 and planning to open a winery in California under the name “Naked…
Chipotle Mexican Grill, Inc. has filed another infringement action against a retailer allegedly selling a chicken sandwich combo using the CHIPOTLE® trademark. Chipotle Mexican Grill, Inc. v. Jack in the Box, Inc., No. 12-02511 (D. Colo., filed September 21, 2012). Information about the trademark infringement lawsuit Chipotle filed in April against Kroger Co. appears in Issue 435 of this Update. In the new action against Jack in the Box, Chipotle alleges that when asked to cease using the CHIPOTLE® marks to promote its chicken sandwich, the defendant responded that its use of the word did not infringe the marks and that it did not currently plan to use the mark, which was used in connection with a limited time offer, in the future. Still, according to the complaint, the defendant “suggested that it would use the CHIPOTLE Marks in the future.” Claiming that its marks have “acquired substantial goodwill and are…
The Humane Society of the United States (HSUS) has sued the U.S. Department of Agriculture (USDA) seeking to end payments made to the National Pork Producers Council (Pork Council) for the purchase of the registered mark “Pork, The Other White Meat.” HSUS v. Vilsack, No. 12-01582 (D.D.C., filed September 24, 2012). According to the complaint, which details the circumstances leading to the mark’s creation, development and use, the Pork Council should not have retained ownership of the mark, and the $60-million, 20-year contract for its purchase should have been terminated when USDA decided to retire the mark and create a new one. HSUS contends that the contract is funded with pork-producer checkoff program dollars, which cannot be used for lobbying. Because the Pork Council is a lobbying organization, HSUS claims that the ongoing payments under the purchase agreement violate federal law. HSUS seeks a declaration that these expenditures of checkoff…
