Jack Daniel’s, the producer and distributor of Jack Daniel’s Tennessee whiskey, claims that it is “one of the oldest, longest-selling, and most iconic consumer products in American history.” No matter how iconic you are, however, you’re bound to find yourself protecting your brand – and your consumers – from copycats.
On April 20, 2018, Jack Daniel’s filed a complaint in Federal District Court alleging trademark and trade dress infringement by two Texas-based manufacturers and distributors of a product called Lonehand Whiskey: Dynasty Spirits, Inc. and Buffalo Bayou Distilleries, LLC. While Dynasty Spirits distills, advertises, and markets Lonehand Whiskey, Buffalo Bayou Distilleries is responsible for labelling, packaging, and shipping the product. Unfortunately for the defendants in this case, Lonehand Whiskey looks a lotlike Jack Daniel’s Tennessee Whiskey.
Despite some minor changes to the overall design, Jack Daniel’s has kept its packaging consistent over time. Virtually every Jack Daniel’s bottle in the marketplace (excluding some of the limited edition runs) has resembled the typical square shape with angled shoulders, beveled corners, a ribbed neck, and a black cap. To finish it off, the black label with “Tennessee” in white script is a prominent feature of the Jack Daniel’s Tennessee whiskey bottle.
As any good brand would do, Jack Daniel’s has obtained numerous registrations with the USPTO for its marks over time with its most prominent registration being the word mark for JACK DANIEL’S for distilled spirits and whiskey. Additionally, Jack Daniel’s has several Federal registrations for elements of the Jack Daniel’s trade dress (or packaging), such as the three-dimensional square bottle, the black label with the white JACK DANIEL’S inscription thereon, and the stylized JACK DANIEL’S design mark.
The complaint filed against Dynasty Spirits and Buffalo Bayou Distilleries last states notes that “Tennessee whiskey has been sold in the United States under the JACK DANIEL’S mark continuously since 1875, except during prohibition.” With such little change in the appearance of the classic Jack Daniel’s Tennessee whiskey bottle, the JACK DANIEL’S mark and trade dress have become inherently distinctive. Because of the mark’s fame and distinctiveness, Jack Daniel’s claims, the mere appearance and packaging of a Jack Daniel’s bottle enables the consumer to almost immediately recognize the source of the product and quickly make a purchase.
Throughout the complaint, Jack Daniel’s refers to the defendants’ product, Lonehand Whiskey, as the “Accused Whiskey.” Lonehand Whiskey is sold in a square bottle with a ribbed neck, a black label, and a black cap much like Jack Daniel’s Tennessee whiskey. To make things more confusing for those who are looking for whiskey at the liquor store, both products are often sold in the same section in close capacity.
Jack Daniel’s alleges that Dynasty Spirits and Buffalo Bayou have “pursued a pattern of conduct and an intentional business strategy designed to mislead and deceive customers into believing that [their product is] made, put out, licensed or sponsored by, or affiliated or associated with Jack Daniel’s.” To support this assertion, Jack Daniel’s cites the confusingly similar (and misleading) label for Lonehand Whiskey as well as the appearance of the bottle itself.
Additionally, Jack Daniel’s cites various negative reviews of Lonehand Whiskey that compare the product to Jack Daniel’s. Essentially, Jack Daniel’s argues that the association with and confusion over the source of Lonehand Whiskey, which has been shown to be an inferior product, has harmed and will continue to harm the reputation of the Jack Daniel’s brand.
Jack Daniel’s also alleges that Dynasty Spirits and Buffalo Bayou Distilleries are liable for false and misleading advertising under California state law. Specifically, Jack Daniel’s notes that the label implies that the distillery or brand was established in 1983, but Jack Daniel’s alleges that there is no proof of establishment of the distiller or the brand before 2012. In fact, the LONEHAND mark was only first used in commerce earlier this year.
This will likely be another one of those trademark cases that leads to settlement, but we won’t know until that happens. Jack Daniel’s not only has a great argument, but a famous, well known mark and distinctive trade dress to back that up.
With that in mind, perhaps Dynasty Spirits and Buffalo Bayou Distilleries will be willing to change up their branding and move on. A fresh start may be a good idea for them based on the reviews of their whiskey, which was reviewed by one customerto be the equivalent to “urine in a bottle.”
Author*, Caroline Womack, is a 2L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.*