Trademark owners have a duty to defend their trademarks against possible and actual infringement. Ignore infringers and your trademark rights may evaporate.  Defending trademarks, however, is a full time job and not for the weak of heart (or wallet).  The beverage industry is a breeding ground of intellectual property disputes and trademark owners aggressively defend their billion dollar brands.  Let’s take a look at one brand owner, Sazerac Company, which has been a featured “guest” of recent IP news sources.  Sazerac distributes Fireball Cinnamon Whisky, which, according to Forbes, is “One Hot Drink:”

The best-selling US liqueur sells itself as “Tastes Like Heaven, Burns Like Hell,” and, I find out when I take a swig from the bottle when I get home, the label isn’t lying.

Sazerac spares no expense in defending its brands.  In February 2012, Sazerac filed a lawsuit against Hood River Distillers, Inc. for its attempt to register “SinFire,” which Sazerac believed was too close to “Fireball” and another of its brands, “Fire Water.”  The case was dismissed with prejudice in 2013 on unknown terms, presumably because it settled although the SinFire brand still exists.In 2014, Sazerac sued Crosby Lakes Spirits Co. over its use of the “Bison Ridge” brand for Canadian whisky.  Sazerac complained that Crosby Lakes had the “specific intention of making a sound- and look-alike product” to its own “Buffalo Trace” bourbon whiskey.  According to Law360,

Both bottles feature a “sketched rendering of a standing, forward – facing Buffalo,” both feature a general color scheme of brown, white and gold, and both are made of clear glass that exposes the golden – brown color of the liquor inside….and the animal-themed names are quite similar.”

The case eventually settled. Then, in 2015, Sazerac settled a legal dispute with Jack Daniel’s in which Sazerac accused the venerated distiller of infringing its “fireball” brand in promoting Jack Daniel’s Tennessee Fire in online advertising.  The parties also settled their dispute but on what terms is anybody’s guess.  Both brands are still around.

The same year, Sazerac filed another suit against Stout Brewing Company LCC alleging that Stout Brewing’s brand, “Fire Flask” infringed Sazerac’s “Fireball Cinnamon Whiskey.” The companies settled their dispute upon Stout Brewing’s agreement to “cease selling its product with infringing labels and redesign its label.”

Sazerac also filed an opposition action against Salt Tequila USA, LLC in 2015 for its attempted U.S. trademark registration of  “Salt.”  Sezarac argued that because salt is an integral ingredient in tequila, registration of “Salt” would “will interfere with the rights of others affiliated with the alcohol industry in identifying a quality of their goods, namely the flavor and/or characteristic of an alcoholic beverage.”  The action was terminated by agreement of the parties and the “Salt” brand still exists.

Most recently, in February 2017, Sazerac filed suit against Caribbean Distillers, LLC, a Florida distillery, alleging that Caribbean’s “Mad Hen” brand was too close in likeness to its “Fireball” brand.  It’s not the names that are allegedly confusing but the trade dress:

Madcap head is golden brown in color, cinnamon flavor, and marketed in clear bottles of identical flask and featuring the same color combination as Sazerac’s “Fireball” trade dress.

Sazerac is only one of several billion dollar players in the alcoholic drink industry. Obviously, participants should select trademarks with care and be prepared to defend them against aggressive, territorial players.
— Adam G. Garson, Esq.