Recently, the makers of the FIREBALL brand whiskey filed a lawsuit against rival Jack Daniels for trademark infringement, unfair competition, and deceptive trade practices under Kentucky law. The Complaint alleges that Plaintiff is the owner of trademark registrations of the term FIREBALL for use in connection with liquor related products. The Complaint also alleges that Defendant used the term FIREBALL in advertisements using the Google ADWORDS system and purchased keywords of the term FIREBALL so that consumers searching for the FIREBALL brand whiskey would instead view advertisements for the Defendant’s TENNESSEE FIRE brand whiskey. The Complaint further alleges that the parties are rivals in the whiskey industry and that the Defendant’s conduct was done willfully and in an effort to gain a competitive advantage.
The unauthorized use of a competitor’s trademark in Google ADWORDS, as a search engine keyword, or in metatags has become a common practice among competitors. This type of unauthorized conduct can be actionable as trademark infringement and/or unfair competition. In addition, statements made about a competitor online may be actionable if they rise to the level of a misrepresentation or create a reasonable likelihood that consumers may be confused as to the source, identity or sponsorship of the advertiser’s product.
Search Engine Optimization (“SEO”) has become a big part of business advertising and marketing campaigns. As a result, a business should always be looking out for competitors attempting to use its trademark in an unauthorized manner or to effect SEO. Please contact our office if you have any questions regarding the information in this article.
Daniel Devine, Esq.
Santucci Priore, P.L.
 See, Sazerac Brands, LLC, et. al. v. Jack Daniel’s Properties, Inc., Case No. 3-15-cv-849-DJH (W.D. Ken. November 23, 2015).
 See, N. American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1221-1224 & n.10 (11th Cir. 2008).
With the expanding international scope of business today, business owners need to be aware of ways to ensure that their brand and goodwill is protected internationally. Protection of trademarks is considered territorial, which means that protection over a trademark in one country usually does not provide protection in other countries. For example, a trademark registration in the United States will only provide protection against infringing uses in the United States, but not in Europe or China. To be protected in foreign countries such as those in Europe and in China, registrations must be acquired in those jurisdictions.
So is international trademark protection worth the cost? Just ask basketball legend Michael Jordan, who is currently involved in a trademark lawsuit with a Chinese company called Qiaodan Sports over the use of his name and jersey number “23” without his permission. Even though Michael Jordan is internationally known, Qiaodan Sports has recently obtained a judgment in its favor in China allowing its use of the Chinese equivalent of Michael Jordan’s name and his jersey number. Michael Jordan is not the only one squaring off against foreign companies in the trademark arena. Similarly in China, Apple, Inc. was involved in a dispute regarding an iPad trademark and ended up paying millions to settle the case. United States shoemaker New Balance has also been involved in trademark disputes in China. The failure to properly register trademarks in foreign countries can cause the potential loss of business in lucrative markets.
So what options are there? One of the main differences in the registration of trademarks over different jurisdictions is that some jurisdictions recognize trademark rights based upon the first to register, while others, such as the United States, recognize trademark rights based upon the first to use the trademark. Nonetheless, there are systems in place which permit cost effective and efficient registration of a trademark in multiple jurisdictions at a time. One such system is entitled the Madrid Protocol, which allows a single trademark application be filed in multiple countries that are governed by the Madrid Protocol, such as countries that are part of the European Union and in China. Countries in the European Union and China should not be ignored as they represent a large portion of international business. Often a United States trademark registration is not enough to stay internationally competitive. The filing of international trademark applications may be a good idea for your business and there are several important considerations, such as whether a country is covered by an international treaty and the applicable filing fees. Please contact our office if you have any questions regarding international trademark registration or the information in this article.
 Subject to any appeal.