I have written before about Jack Daniel’s efforts to protect the iconic design of the label and bottle for its Tennessee Whiskey. Now, Jack Daniel’s has filed suit against J&M Concepts, LLC and Popcorn Sutton Distilling, LLC for infringement this”famous” trade dress which is allegedly embodied in, among other things, several trademark registrations with the USPTO. The Defendants’ produce “Popcorn Sutton’s Tennessee White Whiskey,” named after Marvin “Popcorn” Sutton (“Sutton”), a Appalachian moonshiner.
As alleged in the Complaint:
At some point in 2012, Defendants developed new packaging for Popcorn Sutton’s Tennessee whiskey that embodied a dramatically different trade dress for the product. …. This new packaging embodies trade dress featuring a combination of a square-shaped bottle with angled shoulders that house a signature and beveled comers, and labeling with a white-on-black color scheme, filigree designs, and a font style reminiscent of that of the Jack Daniel’s Trade Dress.
Accordingly, Jack Daniel’s alleges that Defendants’ product “is likely to cause purchasers and prospective purchasers of the product to believe mistakenly that it is a new Tennessee white whiskey product in the Jack Daniel’s line, that it is licensed or authorized by [Jack Daniel’s], and/or that there is a business relationship, affiliation, connection, or association between Defendants and [Jack Daniel’s].” Based on this core allegation, claims are asserted for trademark infringement, unfair competition and deceptive trade practices.
The U.S. Chamber Institute for Legal Reform (“ILR,” an affiliate of the U.S. Chamber of Commerce) has released a new report called The New Lawsuit Ecosystem: Trends, Targets and Players that includes a section devoted to “Food Class Action Litigation.” ILR’s stated mission is to “restore balance, ensure justice, and maintain integrity within the civil legal system.” And ILR pulls no punches in asserting that the recent surge in food class action litigation is “lawyer driven” and generally involves questionable accusations.
Some groups use these lawsuits to pursue their own political agendas when they cannot achieve their goals by legitimate means through elected officials or regulatory agencies. Others are just looking for the next “deep pocket.” While some plaintiffs’ lawyers win lucrative fees, consumers are saddled with higher prices and fewer choices as a result of litigation by the self-anointed food police
Putting aside the strong viewpoint, the report is an excellent summary of the “unprecedented surge in consumer class actions against food manufacturers.” Please see the complete report here.
As previously reported on this blog, Kraft Foods filed suit against Cracker Barrel Old Country Store, Inc. (“CBOCS”) on January 31, 2013 in light of the latter’s plan to use the CRACKER BARREL trademark on products such as ham, bacon, lunch meats, and summer sausage in a broad retail outlets including grocery and club stores.
On July 1st, Judge Gettleman of the Northern District of Illinois granted Kraft’s motion for a preliminary injunction and enjoined CBOCS “from manufacturing, advertising, distributing, shipping, promoting, offering for sale, selling or licensing third parties … to use the Cracker Barrel mark on food products in retail or wholesale trade other than through CBOCS’ traditional trade channels consisting of CBOCS’ restaurants, adjoining CBOCS stores, CBOCS catalogues, CBOCS’ internet site, and CBOCS gift cards as currently distributed.”
Now, the parties have reached an agreement that allows CBOCS to ship its first products through other retail stores, but not under the “Cracker Barrel” name. Instead, it will use the mark “CB Old Country Store.”
Despite this agreement, the lawsuit is still moving forward as the parties continue to dispute whether Cracker Barrel’s expansion of use is an impermissible expansion to new retail channels or within its natural zone of expansion.
This past August, I was quoted on Forbes.com in an article on a grocery store in Vancouver called “Pirate Joe’s” that is based entirely on selling Trader Joe’s private label foodstuffs in Canada where there are no Trader Joe’s stores. Among other things, I noted the jurisdictional challenges posed by seeking extraterritorial application of the Lanham Act. Now, the Court has indeed dismissed the case on the grounds that it lacks subject matter jurisdiction in this regard. In particular:
Here, all alleged infringement takes place in Canada and Trader Joe’s cannot show economic harm [necessary for any extraterritorial application of the Lanham Act]. Even if Canadian consumers are confused and believe they are shopping at Trader Joe’s or an approved affiliate when shopping at Pirate Joe’s, there is no economic harm to Trader Joe’s because the products were purchased at Trader Joe’s at retail price. [A]ny “goodwill” related harm is too tenuous to support a cognizable Lanham Act claim when all infringing conduct is abroad.
Please see the complete ruling here.