Jack Daniels “Old No. 7” Brand Tennessee Sour Mash Whiskey is marked with a distinctive black label including stylized white writing attached to a bottle of Tennessee’s finest sour mash whiskey.  For some, the image of a Jack Daniels bottle conjures images of drunken bar brawls, motorcycle gang members guzzling whiskey or the antics of inebriated 1980’s hard rock musicians.  But for Jack Daniels, the distinct black and white label on its Old No. 7 Brand whiskey represents valuable intellectual property which immediately identifies in the minds of consumers the distinct character and flavor of the contents of the bottle to which the label is affixed.  Because even those who do not consume Jack Daniels Sour Mash Whiskey recognize the label of this legendary intoxicating beverage, the Jack Daniels distillery actively confronts unauthorized users of its trademarked label in order to prevent its unauthorized use.

Many attorneys have written cease and desist letters on behalf of their clients, or at least have reviewed such letters after they have been received by clients.  These letters often are written in a fit of righteous indignation over the obvious theft of one’s brand, or the tarnishment and diminution of the value of a mark resulting from the use of a confusingly similar mark by another party.  More often than not, this results in a letter which is more capable of peeling paint off the walls or curling the recipient’s hair than it is able to clearly and concisely communicate the reasons why unauthorized use of a trademark can damage a trademark owner’s intellectual property.  Recently, however, a cease and desist letter written by counsel for Jack Daniels Distillery dispensed with the usual vitriol took a different approach.

Continue Reading Jack Daniels Proves That You Can Catch More Flies With Whiskey

By: David Muradyan

The Ninth Circuit, like many of its sister circuits, uses the “likelihood of confusion” analysis to determine whether one mark infringes upon another mark.

For background, the Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127, defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9^th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”). 

Continue Reading Likelihood of Confusion analysis under the Lanham Act

By: Scott Hervey

Without fail, every two years I get a call from a client who wants to incorporate an element of either the Winter or Summer Olympics into a marketing scheme.  This year was no exception.  One of our clients – a fairly significant company in the wine industry – created a graphic featuring wine rings (think of wine stains made by an overly full wine glass) in the form of the Olympic rings, the London skyline in the backdrop, and the official London 2012 Olympics logo and wanted to use it in promoting wine for sale.  Although extremely creative, it certainly would have gotten our client into a jam with the United States Olympic Committee and possibly with the London Olympic Committee.

Under the Ted Stevens Olympic and Amateur Sports Act, Congress granted the USOC exclusive ownership of certain Olympic-related words and symbols, including the name “United States Olympic Committee” and the words “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Pan American,” “Paralympic,” “Paralympiad,” “America Espirito Sport Fraternite” and the International Olympic Committee’s symbol of five interlocking rings. The Act also permits the USOC to authorize its contributors and suppliers to use these Olympic-related words or symbols, and allows the USOC to initiate civil-action proceedings to address unauthorized use.  Third party marks that contain the designated Olympic-related words or symbols, or any combination thereof, cannot be registered on either the Principal or Supplemental Register (nor can the matter be disclaimed) and must be refused registration on the ground that the mark is not in lawful use in commerce.

Continue Reading Olympics Go For the Gold In Trademark Enforcement