Iconic whiskey says new product’s similarities hurts their brand
Jack Daniel’s considers itself the “most iconic consumer product in American history.” It is, after all, the “unofficial drink of choice” for celebrities like George Clooney, the company claims in a lawsuit.
But now, the company finds itself defending its storied reputation from two Texas businesses it calls “inferior.”
Jack Daniel’s has accused another whiskey brand of trademark infringement in a lawsuit, but it’s not the name of the brand — Lonehand Whiskey — that the company takes issue with. Instead, the company claims that Lonehand’s bottle design, including its “neck wrap closure” and “arched lettering,” is so similar to the Jack Daniel’s bottle that it “dilutes” its product.
In a recent lawsuit, Jack Daniels says Lonehand Whiskey, which is manufactured in Texas, features elements of Jack Daniels Trade Dress.
Jack Daniel’s even included highly critical online reviews of its competitor’s product, which claim it tastes like “pure urine in a bottle,” has a “weird aftertaste” and is “awful in every presentation.”
Jack Daniel’s lawsuit was filed April 20 in U.S. District Court for the Northern District of California. It claims the Dallas-based Dynasty Spirits and Houston-based Gulf Coast Distillers “pursued a pattern of conduct and an intentional business strategy designed to mislead and deceive consumers into believing that the Accused Whiskies are made, put out, licensed or sponsored by, or affiliated or associated with, Jack Daniel’s.”
The complaint zeroes in on Lonehand Whiskey’s Design, which features a square bottle, black cap, black neck wrap closure, and black label bearing the Lonehand mark in arched lettering at the top of the label, with the word “whiskey” in script, and the words Tennessee Sour Marsh in the lower portion of the label.
Jack Daniel’s says it owns trademark registrations for those features, including Registration No. 4,106,178 for the square bottle and Registration No. 4,106,179 for its label.
The complaint also claims the makers and marketers of Lonehand Whiskey “instructed retailers to display [their products] adjacent to Jack Daniel’s Tennessee whiskey and to use promotional materials that employ elements of the Jack Daniels Trade Dress.”
That, according to one expert, is what makes the lawsuit unique.
“This is a unique case that has a very powerful twist. You have the unique dimension that the defendants in this case actually asked that their product be placed directly alongside the Jack Daniels product. They’re going to be using that evidence to try and drive home the point that the defendants knew exactly what they were doing in order to try and deprive these sales from the folks at Jack Daniels,” said Seth Berenzweig, a business attorney not involved in the
John Dillard, professor of marketing at the University of Houston-Downtown, said the outcome of the lawsuit will largely be determined by one factor: whether Lonehand Whiskey’s design caused consumer confusion. To prove that, the courts will look at several elements such as the strength of the senior mark, the similarity between the products, and the quality of the junior user’s products.
Berenzweig said there is a lot at stake for Jack Daniel’s.
“When a lawsuit like this is taken,” he said, “the reason why it’s done is not only to win the case that’s sitting on that docket, but to protect the brand and send a message to other alleged violators that this is their turf, this is their territory, and they’re going to protect their trademark or dressmark.”
Gulf Coast told Fox News it was maintaining its policy of not commenting on pending litigation.” Dynasty Spirits, meanwhile, has not yet responded to repeated requests for comment.
Madeleine Rivera is a multimedia reporter based in Houston, Texas.