David Versus Goliath in Whiskey Bottle Showdown

Posted by on Oct 29, 2013

One of the iconic, uniquely American products out there is Tennessee Whiskey.  With rugged, outlaw roots stemming from the days of moonshining and prohibition but now accepted the world over as a highly sought after beverage, even the term Tennessee Whiskey tends to evoke a certain image, perhaps even a certain nostalgia.

Certainly these mental images, or customer associations in trademark-speak, can give rise to legal problems.  One such case was recently filed by Jack Daniel’s, maker of the iconic black-and-white labeled bottles of Sour Mash whiskey found in bars and restaurants the world over.  In their lawsuit for trademark infringement, the holders of the Jack Daniel’s mark alleged that a tiny Tennessee whiskey maker, Popcorn Sutton’s Tennessee White Whiskey, infringes their valuable and famous mark.

It is the classic battle of David v. Goliath, often seen in trademark suits.  David, played by an iconoclastic former moonshiner named Popcorn Sutton who inspired a line of whiskey bearing his name goes up against the large, powerful Brown-Forman Corporation, of which Jack Daniel’s Properties is a subsidiary.

The allegation is that the new packaging of Popcorn Sutton’s Whiskey is confusingly similar to the Jack Daniel’s packaging, or trade dress.  Remember that just like the actual words of the trademark, the trade dress is also protectable under the Lanham Act.

Trade dress may be any distinguishing feature of the product configuration or packaging that is noted by the consumer.  In this case, both whiskeys feature similarly shaped bottles.  Both are square in cross-section, with “beveled corners and angled shoulders” according to the complaint.  Both feature white lettering on a more-or-less solid black background.  The complaint even alleges that the fonts used are similar. (The trade dress at issue is for Jack Daniel’s “classic” or “Old No. 7” bottle.)

One of the issues likely to arise in this case will be the distinctiveness of the trade dress and the issue of secondary meaning.  Recall that the standard is, according to Two Pesos, that inherently distinctive trade dress does not require secondary meaning (source identification in the mind of the customer) to be protectable under the Lanham Act.  In this case, the Jack Daniel’s packaging is so famous and well established that whether or not a jury finds it to be inherently distinctive may be a rather moot point as it would be very difficult for Popcorn Sutton’s to argue it lacks secondary meaning.

However, if the case actually makes it to a full trial on the merits, Jack Daniel’s may have certain difficulties demonstrating a likelihood of customer confusion.  The fame of the brand and the product tends to cut both ways.  Attorneys for Popcorn Sutton’s could very well make the argument that purchasers of fine bourbon are discerning and educated customers and would never be confused.  Both sides are likely to use surveys and expert testimony to either establish or attack this issue.  In addition, the market for American bourbon seems to have adopted elements of the packaging at issue.  For instance, the trade dress of Evan Williams Kentucky Bourbon seems arguably more similar to Jack Daniel’s than that of Popcorn Sutton’s.

This case holds the promise to shed some light on the issues of the outer limits of protectable trade dress under the Lanham Act – specifically the degree to which the holder of a very famous and well-established trade dress can limit competitors from using similar elements.