Category Archives:Trademark Infringement

Makers of FIREBALL Whiskey file trademark lawsuit against Jack Daniels

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.[1] The Complaint alleges that Plaintiff is the owner of trademark registrations of the term FIREBALL for use in connection with liquor related products.[2] 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.[3] 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.[4]

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.[5] 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.
Shareholder

[1] 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).
[2] Id.
[3] Id.
[4] Id.
[5] See, N. American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1221-1224 & n.10 (11th Cir. 2008).

Winery and Kombucha Tea companies battle over use of BAREFOOT trademark

Recently, E. & J. Gallo Winery (“Gallo”) opposed the registration of a trademark application filed by Conscious Cultures LLC (“CC”) for the term BAREFOOT BUCHA.[1] CC applied for registration of the mark BAREFOOT BUCHA for use in connection with Kombucha Tea.[2] According to CC’s website, Kombucha Tea is a “naturally carbonated, fermented tea that originated in Eurasia” which is usually drank after a meal and provides digestive benefits.[3] The Kombucha Tea provided by CC does not contain alcohol.[4]

In its opposition Gallo alleges that it is the owner of the family of trademarks for the term BAREFOOT which has been used in connection with a variety of wine related products and services since 1986.[5] Gallo alleges that it is the prior user of the mark BAREFOOT and that CC’s use of the term BAREFOOT BUCHA is likely to confuse consumers about the source of the respective products.[6]

This opposition is interesting because it involves a dispute between two products that are sold in the same channels of trade, i.e., beverage products, but that are arguably marketed to a different class of consumer. A finding of likelihood of confusion does not require that the respective products be related, as there are several other factors that will be considered, such as the similarity of the respective trademarks or whether actual confusion exists. Nonetheless, CC is likely to raise the argument that it’s’ Kombuca Tea is a completely different product from Gallo’s wine and is sold to a different class of consumers who are not likely to believe that it originates from Gallo.

If you have any questions regarding the content of this article or on effective ways to police intellectual property please contact our office.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, E. & J. Gallo Winery v. Conscious Cultures LLC, Opposition No. 91222763 (TTAB July 10, 2015).
[2] Id.
[3] See, http://www.barefootbucha.com/faqs/
[4] Id.
[5] See, E. & J. Gallo Winery v. Conscious Cultures LLC, Opposition No. 91222763 (TTAB July 10, 2015).
[6] Id.

Beyoncé, Jay-Z, Kanye West, Pharrell and Rihanna sue company in intellectual property dispute

Recently, musicians and entrepreneurs Beyoncé, Jay-Z, Kanye West, Pharrell Williams and Rihanna, filed a lawsuit in the Southern District of New York against French based fashion company ELEVENPARIS for various claims relating to right of publicity violations, unfair competition, and trademark infringement.[1] The lawsuit results from ELEVENPARIS’ alleged unauthorized use of the Plaintiffs’ names, images, likeness and trademarks on various clothing products, “including but not limited to, t-shirts, tank tops, sweatshirts, hats, backpacks and cell phone cases.”[2] For example some of the t-shirts use the slogan “Kanye is My Home” or “Pharrell is My Brotha” or lyrics of famous songs of the Plaintiffs.[3] Plaintiffs further allege that Defendants are using confusingly similar marks on their clothing which are derived from the Plaintiffs’ respective names and marks, such as by using the term CAYONCE which is allegedly confusingly similar to the trademark BEYONCÉ. Plaintiffs also allege that Defendants were aware of Plaintiffs’ claims but refused to cease and desist from selling the allegedly unauthorized goods and continue to sell such goods in their Manhattan, New York retail store.

Plaintiffs are seeking damages for willful trademark infringement, including an accounting profits. Plaintiffs are also seeking an injunction to prevent the use of their names, images, likeness and trademarks by Defendants. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, Beyoncé Giselle Knowles-Carter, et. al. v. Eleven LLC, et. al., Case No. 15-cv-07890-AJN (S.D.N.Y. Oct. 6, 2015).  
[2] Id.
[3] Id.