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Blog

Distillations: Redemption Song, or, Number One with a Bulleit

June 21, 2017

Blog

Distillations: Redemption Song, or, Number One with a Bulleit

June 21, 2017

Back to Fish's Trademark and Copyright Blog

 

A trademark can be more than just a word, of course.  The Lanham Act’s definition of a trademark “includes any word, name, symbol, or device, or any combination thereof.”  Here on the Distillations beat we know that includes the designs of bottles and labels.  Container designs can be powerful source-identifiers, whether you are selling vodka, or cola or ketchup.  Makers of liquor have known this for years – the spirits industry has given us some of the world’s most iconic bottle designs.  A recent case filed in federal court in New York City demonstrates that bottle designs can be valuable trademarks, and that coming too close to a competitor’s bottle design can get you in hot water.

The trouble started in November of 2016 when W.J. Deutsch & Sons, bottlers of Redemption brand whiskeys, switched their bottle design from this clean, contemporary design:

To this more traditional look:

The problem is that Bulleit whiskey, a brand now owned by spirits giant Diageo, has for years been sold in this vintage bottle design, intended, according to Diageo, to “evoke the rugged look and feel of the American Frontier”:

After apparently getting no satisfaction through a cease and desist letter, Diageo sued Deutsch on June 6th, seeking monetary and injunctive relief.  Diageo North America, Inc. v. W.J. Deutsch & Sons Ltd. et al., Case No. 1:17-cv-04259 (S.D.N.Y.).

In the complaint, Diageo claims trademark rights in the following combination of elements – all of which it alleges are copied in the new Redemption bottle:

  • A clear, canteen shaped glass bottle with rounded shoulders;
  • An embossed brand name above the label;
  • Arched text in the top line of the embossed brand name;
  • A convex text divider between components of the embossed brand name;
  • An arrow-shaped text divider on the label;
  • A border of parallel lines on the label; and
  • A cork bottle cap with a black top.

One could, of course, spot any of these elements separately on any number of spirits bottles, but Diageo claims that it has used this combination of elements since 1999, that it is highly distinctive, famous, and that it immediately identifies to consumers that this is Bulleit whiskey (even if they don’t see the Bulleit name).

Diageo also does a reasonably good job in their pleading to allege facts supporting the distinctiveness of their bottle.  The complaint includes claims about the awards and recognition the bottle design itself has won; the awards won by the whiskey, the way the bottle is prominently featured in Bulleit ads, and the sales growth enjoyed by the brand.

Diageo obtained a federal trademark registration (Reg. No. 3075812) for the design, and notably the drawing in the registration shows most of the claimed elements:

Importantly, the registration is more than five years old, and Diageo timely filed a declaration of incontestability under Section 15 of the Lanham Act.  This means that the registration is insulated (not to say bullet-proof) from attacks on the grounds that the design is not distinctive.  Deutsch would normally want to defend (not to say redeem) their design by introducing evidence that there are many other glass spirits bottles with black cork tops and embossed writing and vintage-looking labels – but that will largely be unavailing here.  They will likely have to focus on the points of dissimilarity between the designs.  Incontestability is one of the major long-term advantages that can be gained when you are diligent about registering your trademarks, even “non-traditional” trademarks like this.

The lesson for those preparing to enter the market is that you do not just have to confirm your intended name is available – you also need to be sure that your bottle and label designs are not too similar to any of your competitors, lest you find yourself beyond redemption.

Blog Authors

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Robert M. O'Connell, Jr. | Of Counsel

Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and protection of...

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