The Brown-Forman Corporation, which owns the Jack Daniel Distillery (“Jack Daniel’s”), has filed suit against two Texas-based whiskey distributors for various intellectual property infringement claims that include, but are not limited to, Jack Daniel’s trade dress infringement, false advertising, and trademark infringement. Specifically, Jack Daniel’s has filed suit in the U.S. District Court for the Northern District of California allegeing that two Texas-based companies that produce bourbon whiskies are deliberately infringing upon Jack Daniel’s trade dress.  In the complaint, Jack Daniel’s complains that Dynasty Spirits and Buffalo Bayou Distillers d/b/a Gulf Coast Distilleries, are producing whiskey lines that attempt to palm off of the established goodwill and reputation of the more well-known whiskey distributor, Jack Daniel’s.  An example of one of the allegedly-infringing bottles compared to Jack Daniel’s whiskey is depicted below:

Because the defendants’ whiskeys are bottled in a very similar square bottle labeled in black, and marked with the words “Tennese Sour Mash,” Jack Daniel’s believes that there are too many similairites between the packaging to constitute coincidence.  Jack Daniel’s already holds registered trademarks for their whiskey lines, including a registration for the actual square bottle, U.S. trademark registration no. 4,106,178, which they are relying upon for the Jack Daniel’s trade dress claim.

In their complaint, Jack Daniel’s specifically alleges that the defendants have participated in conduct aimed at intentionally deceiving and misleading customers.  By using Jack Daniel’s trade dress, the defendants are trying to palm off the goodwill already created by the Jack Daniel’s brand.  Additionally, Jack Daniel’s alleges that the defendants instructed retailers to purposely display their infringing products next to Jack Daniel’s whiskeys and to use promotional material that also bears a striking resemblance to Jack Daniel’s trade dress.

In addition to the claims of infringement, Jack Daniel’s prays for injunctive relief because they believe that the defendants’ actions are diluting Jack Daniel’s trademark, Jack Daniel’s trade dress, and the brand’s overall goodwill because the defendants’ whiskey is of inferior quality and has already received many negative reviews.

For the trade dress suit to be successful, Jack Daniel must convince the court that the black label and square design of their bottle has become iconic and synonmous with the Jack Daniel’s brand.  Under trade dress law, courts have found that specific elements of a product or service provider may be worthy of legal protection once they have gained a certain amount of fame.  Trade dress law commonly recognizes and provides protection for the characteristics or visual appearance of a branded product or its packaging.  Further, courts have expanded the scope of trade dress protection to also include the design elements of of buildings, restaurants, franchises, and business chains.  As long as the packaging or design elements can consistently identify the source of the product for consumers, it may be considered trade dress.

As such, Jack Daniel’s has filed for immediate injunctive relief, triple damages, attorneys’ fees under claims of trademark infringement, trademark dilution, trade dress infringement, trade dress dilution, unfair competition, and false advertising.  Time will tell whether Jack Daniel’s will succeed in their claims, but it would behoove clients and counsel alike to follow the court case because it may provide further guidance on trade dress law.

For more information on this topic, please visit our Trade Dress Protection & Enforcement service page, which is part of our Trademark practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the IP law firm and its IP law attorneys may be found at www.klemchuk.com.

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