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…
Tag Archives trademark
The U.S. Court of Appeals for the Fifth Circuit has affirmed a ruling that a Texas restaurant, “The Krusty Krab,” infringed Viacom International Inc.'s common law trademark. Viacom Int’l, Inc. v. IJR Capital Invs., No. 17-20334 (5th Cir., entered May 22, 2018). The court held that Viacom had established both use and distinctiveness of the mark because "The Krusty Krab” had been extensively and consistently licensed, establishing Viacom’s ownership of the mark as an identifier of goods and services. The court also found an impermissible likelihood of consumer confusion. Although the court noted that its ruling did not establish trademark protection “in every context” for Viacom’s mark, it affirmed the finding of the district court that Viacom had established its ownership in common law.
A consumer has filed a putative class action alleging Trader Joe's Co. falsely advertises its Sour Gummies by failing to disclose that the product contains d-l-malic acid. Wong v. Trader Joe's Co., No. 18-0869 (S.D. Cal., removed to federal court May 4, 2018). The plaintiff asserts that under California law, "any artificial flavor must be identified on both the front-of-package label and the product ingredient list. Defendants fail to do either." According to the complaint, "Trader Joe's maintains a pervasive national marketing campaign guaranteeing that all its house-brand products are only naturally flavored," including the statement "when you see our name on a label, you can be assured that the product contains: YES quality ingredients NO artificial flavors." Alleging unfair competition, false advertising and negligent misrepresentation, the plaintiff seeks class certification, damages, corrective advertising and attorney's fees. In addition, Trader Joe's has filed a notice of opposition to an application for the…
The maker of Jack Daniel’s has filed suit against two Texas companies alleging they infringed the Tennessee whiskey’s trademark and trade dress by selling a line of whiskies in similarly shaped bottles with similar labeling. Jack Daniel’s Props., Inc., v. Dynasty Spirits, Inc., No. 18-2400 (N.D. Cal., filed April 20, 2018). The complaint alleges that Tennessee whiskey has been sold under the Jack Daniel’s mark “continuously since 1875, except during Prohibition” and is sold in a “square bottle with angled shoulders, beveled corners, and a ribbed neck, a black cap, a black neck wrap closure with white printing bearing the OLD NO. 7 mark, and a label with a white on black color scheme bearing the JACK DANIEL’S mark depicted in arched lettering at the top of the label [] and the word ‘Tennessee’ depicted in script.” The competitor whiskies “all feature a square bottle with angled shoulders, beveled corners…
The French agency responsible for protecting the country’s agricultural appellations of origin has filed a notice of opposition to a California winery’s application for the trademark “Beardeaux,” arguing that the use would dilute the protected term “Bordeaux” used to designate wines from southwestern France. Institut National de l’Origine et de la Qualité v. Bear River Winery LLC, No. 91240350 (T.T.A.B., notice of opposition filed March 29, 2018). The notice asserts that wines from the Bordeaux region of France are entitled to use an “appellation d’origine contrôlée (AOC)” that “delimits the specific areas to which the appellation pertains, but also specifies the agricultural products from which the product may be derived and production methods and techniques that may be used to make the product.” Further, it argues that U.S. law recognizes the Bordeaux AOC “as a foreign nongeneric name of geographic significance which is also a distinctive designation of a specific…
A federal court in Illinois has denied summary judgment to both parties involved in a trademark dispute over the use of “pizza puffs,” finding that a reasonable jury could rule for either on the question of whether the term is generic. Illinois Tamale Co. v. El-Greg, Inc., No. 16-5387 (N.D. Ill., entered March 29, 2018). Illinois Tamale Co. alleges that El-Greg Inc.’s products infringe trademark and trade dress rights held since 1976. The court also refused Illinois Tamale’s motion for summary judgment on El-Greg’s fair-use defense, finding that a reasonable jury could find in favor of either party on each element of the defense.
American Dairy Queen Corp. has filed a lawsuit challenging W.B. Mason Co.'s application for a “Blizzard” trademark for its bottled water. Am. Dairy Queen Corp. v. W.B. Mason Co., Inc., No. 18-0693 (D. Minn., filed March 12, 2018). Dairy Queen alleges that it trademarked “Blizzard” for milkshakes in 1946 and has extended the mark to ice milk, ice cream, soft serve, machinery and restaurant services. The complaint asserts that the Blizzard marks are “widely recognized by the general consuming public of the United States as a designation of source of Dairy Queen’s goods and services.” Alleging trademark infringement, unfair competition by false designation, trademark dilution, unfair competition and violation of Minnesota’s deceptive trade practices law, Dairy Queen seeks an injunction barring W.B. Mason from using the Blizzard mark, destruction of packaging and advertising materials, award of profits generated from use of the infringing mark and attorney’s fees.
The Trademark Trial and Appeal Board (TTAB) has ruled that Pan American Properties Corp. cannot register “White Sangriiia” as a trademark because both terms, as well as their combination, are “merely descriptive.” In re Pan American Props., Corp., No. 86556214 (T.T.A.B., entered February 26, 2018). TTAB also rejected the company’s argument that the term was “fanciful or suggestive.” Although Pan American Properties referred to its previous registration of the “fanciful” term “Gasolina Sangriiia” for prepared cocktails in its appeal, TTAB noted that neither the company nor the examining attorney included the registration in the application record before the appeal was filed, and TTAB refused to take judicial notice of “registrations residing in the Office.” Finally, TTAB found insufficient evidence to prove the term “sangriiia” had acquired distinctiveness; even if Pan American Properties had provided enough evidence to prove five years of sales, the board held, that period is not long enough…
Kosher Supervision Services Inc. (Kof-K) has filed a complaint alleging Original Gourmet Food Co. used the “Kof-K” kosher certification mark on its product without authorization, alleging the snack maker’s action was “intentional and willful use of a counterfeit of the Kof-K mark.” Kosher Supervision Servs. v. Original Gourmet Food Co., No. 18-2487 (D.N.J., filed February 22, 2018). Kof-K asserts that it never contracted with Original Gourmet, approved or certified any of its products as kosher, or granted permission for its use of the certification mark. Alleging trademark infringement, false designation of origin, dilution of famous mark, unfair competition, Kof-K seeks injunctive relief, damages and a finding that the case is “exceptional” to permit an award of attorney’s fees.
The Trademark Trial and Appeal Board has denied Hy-Vee Inc.'s application to register the “Peaceful Piranha” mark for a line of snack foods, deeming the mark to be too similar to the mark for an existing line of “Piraña” snack foods. In re Hy-Vee, Inc., No., 87120774 (T.T.A.B., entered February 6, 2018). Finding “piranha” to be the dominant portion of the mark, the board found the term likely to confuse consumers unfamiliar with Spanish because they may read the pronunciation of the terms as identical. Further, consumers who understand Spanish may be confused because they would understand the cognate terms as a reference to the fish. Although Hy-Vee argued that “peaceful” and “piranha” are counterintuitive, creating an entirely different connotation with no association to “vicious” piranha fish, the board found the term “peaceful” was not likely to distinguish the marks because “it would merely indicate an atypical piranha, possibly for use…
