Bottles Up

As a firm of trademark and alcohol attorneys, it’s always a thrill when those two topics collide, especially on a major stage. We had one of those great moments of serendipity last week.

The story begins with Diageo, the company that owns Bulleit Frontier Whiskey, a brand of whiskey that might be familiar to our whiskey-drinking readers. In 2017, Diageo sued W.J. Deutsch & Sons, the owner of the Redemption Whiskey brand. The suit centered around allegations of trademark infringement and trademark dilution. Diageo claimed that the trade dress (see our previous post) of the shape of their Bulleit “clear canteen-shaped glass bottle with rounded shoulders” was infringed and diluted by Deutsch’s similar bottle shape from their Redemption brand. In 2022, a federal court jury in New York found that the Redemption bottles did not infringe on the Bulleit bottles, but they did dilute them.

Trademark infringement has been discussed on several of our posts (here, here, and here as examples), so I won’t linger on “Likelihood of Confusion.” Trademark dilution is something we haven’t talked as much about. In short, if your trademark is famous enough (think REALLY famous), the law provides added methods to protect your mark above conventional trademark infringement. The idea is that even if another’s use of a similar mark is not strictly infringement of the famous mark (goods and services are not related enough, the marks are not similar enough; etc.), the famous mark is still harmed because either 1) the other mark holder is using the fame of the famous mark to give their brand a boost and/or 2) the existence of similar marks (even if they are not technically infringing) damages the distinctiveness of the famous mark. Dilution comes in two forms: tarnishment (see my blog post about “evil” bulldozers) and blurring, where the mere existence of similar marks weakens the famous mark.

But wait, what about Bulleit and last week? Right. Diageo’s dilution argument is basically saying that Bulleit and its bottle shape are famous enough that even though Redemption’s bottle is not infringement, the distinctiveness of Bulleit’s bottle is harmed by Redemption’s bottle. Deutsch appealed the 2022 decision to the 2nd Circuit on the grounds that there was no dilution. According to Deutsch, Bulleit’s bottles are not famous enough to be a “famous mark” (remember, for a mark to be “famous,” it has to be REALLY famous). Oral arguments were heard last week. Stay tuned for another post when that decision comes out in a future post. You can also see some articles here and here for further reading on this case. In the meantime, your favorite trademark attorneys will be waiting in anticipation for the court’s decision.

Thanks for reading!