Jack Daniel’s whiskey sues competitor with similar packaging.

Jack Daniel’s whiskey sues competitor with similar packaging.

Trademark law is intended to prevent consumer confusion.  Trademark owners are granted the exclusive right to use a trademark on their goods to prevent consumers from being tricked into purchasing products produced by a different manufacturer.  Trademark law in the United States grants a trademark owner certain rights when the trademark is first used on goods which are sold in commerce.  Trademarks can be registered with the United States Patent and Trademark Office to strengthen the rights associated with the the trademark.  If someone other than the trademark owner places a trademark on goods that is considered trademark infringement.  A trademark owner can sue to stop trademark infringement with an injunction and to get monetary damages for trademark infringement which has occurred.

In addition to registering the trademark itself, a company can also register the trade dress of a product.  Trade dress is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers.  The Trademark Act 15 U.S.C. §1052 regulates trade dress, which originally referred to the product’s dressing and later expanded to include product design and packaging.  Before accepting an application to register trade dress, the United States Patent and Trademark Office must see a clear acquired distinctiveness to protect the trademark.  Trade dress registration is based on the applicant’s claim that the total image of its goods or services is distinctive to that company. The main difference between trade dress and a trademark is that a trademark includes the logo and name, while trade dress covers the image and design of a product and its packaging.

The reason trade dress is important is that competitors will frequently try to mimic the look and feel of a popular product to pass off the competitor’s product.  The competitor hopes that if their product looks enough like a superior product, consumers will be enticed into purchasing the competitor’s product because of the similarities in the packaging.

JACK DANIEL’S PROPERTIES, INC. v. DYNASTY SPIRITS, INC. and BUFFALO BAYOU DISTILLERIES, LLC. 5:18-cv-02400-NC (2018) illustrates how competitors will attempt to package their product in manner which would lead consumers to associate the competitor’s product with a more famous product.

Jack Daniels is a famous type of american whiskey. It is distinctively packaged with a square bottle with angled shoulders, a ribbed neck, a black cap and a black neck wrap closure.  The Jack Daniels trademark is prominently placed on the label on the body of the bottle.

Dynasty Spirits markets Lonehand Whiskey which is produced by Buffalo Bayou. Lonehand Whiskey is packaged in a square bottle with black labels.  While a bottle of Lonehand Whiskey does not say Jack Daniels any where on the bottle, the layout of of text on the labels is arguable similar to a Jack Daniels Label.

Jack Daniels sued Dynsaty Spirits and Buffalo Bayou in, April 2018, for infringement of Jack Daniel’s trademark and trade dress.  Amoung other things, Jack Daniels claims that the defendant’s use of similar packaging dilutes Jack Daniel’s trademarks through blurring and by tarnishment.  Dilution by blurring occurs when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name.  Dilution by tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name.  Jack Daniels submits negative online reviews of consumers that bought bottles of Lonehand Whiskey because they thought it was a substitute for Jack Daniels.

The case has just started, the defendants will be given the opportunity to respond to Jack Daniels allegations.

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