Trademarks can be anything that tells me as a customer that this product or services that I am trying to buy today came from the same source as the last time I bought it. Or put another way, when my nephew has something on his wish list, what can I use to make sure that I am buying the correct toy and not risk the sad rejection of a gift that only a five year old can do?
These indications of source can be words, logos, smells, and colors. But one of the fun ones is trade dress. Trade dress is when trademarks go 3-D. It can be a simple as a bottle design, like Coca-Cola’s distinctive curves, or Pert Plus’ big green block. Or perhaps it is a red dripping wax seal on Maker’s Mark bourbon bottles. It doesn’t have to be bottles, but it is not uncommon for these to be in litigation. After all, I am not the only one who has picked something off the shelf because it was “pretty.”
In order to function as trademark, they have to be something that people recognize as being more than just fulfilling a function. The bottle has to be something distinctive; the wax has to be more than simple sealant. A trademark is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”
That red Maker’s Mark seal was held to be a valid trademark in a case that also gave a nice primer on the history of bourbon. The protection of the red dripping wax seal seemed to focus on the first two words “red” and “dripping.” Others could seemingly use other colors or a nice, clean edge and not be confusing.
Given this, it makes a newly filed lawsuit regarding Fireball whiskey’s claimed trade dress interesting. Sazerac Brands, LLC and Sazerac Company, Inc. (collectively, “Sazerac”) claims that Caribbean Distillers, LLC is moving in on Sazerac’s branding of its “world famous whisky,” which Sazerac further claims to be “one of the most successful liquor brands of all time.” That’s right, that college favorite of Fireball, that which is the most frequently recommended spirit by US bartenders and yet has also been proclaimed “an embarrassment to alcohol,” is flexing its trade dress muscle.
Caribbean Distillers also makes a cinnamon flavored whisky called Mad Hen. Sazerac claims Caribbean Distillers chose a bottle shape, colors, and other branding too similar to that of the world-famous Fireball such that customers will be confused and grab a Mad Hen instead of a Fireball.
Specifically, Sazerac claims that customers recognize Fireball because of:
- The golden brown color of the whiskey
- In a clear, flask-shaped bottle
- Bearing an orange-yellow label
- Featuring charred edges and burn holds to convey a “burnt” image
- A “dragon-man” logo
- The words “cinnamon whisky
- And a distinctive red cap.
All of this creates a commercial impression of “flames and burning as well as an angered beast-like creature.”
Looking at Mad Hen (see photos of each in the complaint), yup, I see a golden brown whisky (not surprising), in a clear flask (again, where have I seen that before in a whisky?) and a red cap. But is any of that all that surprising given we are talking about a cinnamon whisky?
The closer argument is that fact that this is all coupled with a red, orange, and black-edged label. Much to my chagrin, they do not try to push the angry animal-beast argument further. Dragon-man vs. Poultry is something I was looking forward to reading. Perhaps it will be a reason to read later briefs.
What does this mean? Well, for one, that the battle of shelf space and consumer mind space continues. Two, it will be interesting how far each pushes this to see what is functional and what is not. And three, sometimes getting close to your competitor will cause a lawsuit even if you aren’t identical.
And finally, yes, I know the picture above is a rooster, not a hen, and you MUST watch the video for one of the best songs EVER. The video is pretty awesome, too. You will have a better day for it.
Learn more about Trademarks during our presentations in March. Register here: http://www.ogdenglazer.com/events/.