December 20, 2016

Biting the Bulleit

By Bryan K. Wheelock, Principal

In a complaint recently filed in the Southern District of New York (16 CV 09747), Diageo North America, Inc., makers of BULLEIT bourbon sued Sazerac Company, Inc., alleging that Sazerac’s DR. MCGILLICUDDY’S HONEY WHISKEY infringes its trade dress:

Trade dress is a combination of features that the owner believes makes its product.  Diageo identified its trade dress as comprising:

  • Clear canteen-shaped glass bottle with rounded shoulders
  • Embossed brand name on the top two-thirds of the bottle
  • Arched text in the top line of the embossed brand name
  • Rectangular label on the bottom one-third of the bottle
  • Product trademark (e.g. “BULLEIT BOURBON FRONTIER WHISKEY”) above the product designation (e.g. “KENTUCKY STRAIGHT BOURBON WHISKEY”) on the label
  • Text divider with arrow and ball shapes between the product trademark and product designation on the label
  • Border of waved lines on the top and bottom of the label
  • Border of waved lines around the bottle cap

Diageo asserts claims for infringement of its registered trademark, trade dress infringement, federal dilution, state dilution, common law trademark infringement and unfair competition, and deceptive trade practices.

Diageo also had the foresight to obtain Reg. No. 3,075,812 on its trade dress:

Diageo asserts claims for infringement of its registered trademark, trade dress infringement, federal dilution, state dilution, common law trademark infringement and unfair competition, and deceptive trade practices.  The registration of its trade dress will certainly help, but Diageo would probably also have benefited from registrations on some of the other features it regards as its trade dress.

bulleit-2

The courts will protect trade dress in the absence of trademark registrations, but the many benefits of registration, including the presumption of validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark (15 U.S.C. §1115(a), are a strong motivation to register important trade dress features long before they are taken by others.