POSTED BY Scott Chappell

Recently, the owner of the trademark for Jack Daniel’s Tennessee whiskey filed suit against another Tennessee based distillery, Popcorn Sutton Distilling, claiming Popcorn Sutton copied Jack Daniel’s legendary bottle and label design. The complaint filed claims the new bottle for Popcorn Sutton’s Tennessee White Whiskey is “confusingly similar” to the legendary packaging for Jack Daniel’s whiskey. As a result, the plaintiffs are requesting all profits from the whiskey sold in Popcorn Sutton’s new bottles, damages and the discontinuance of the new Popcorn Sutton bottles.

How “confusingly similar” are the two bottles?  Popcorn Sutton’s new bottle for their white whiskey includes angled shoulders, beveled corners and a white-on-black label that is eerily similar to the label seen on Jack Daniel’s famous whiskey, despite Popcorn Sutton’s bottle being pitch black versus Jack Daniel’s signature clear bottle.  Popcorn Sutton switched their bottled from the previous Mason jar they used to sell their whiskey in to the new design at the end of 2012. Jack Daniel’s representatives contend that the font and design used on Popcorn Sutton’s label combined with the similar bottle would cause public confusion.

The signature Jack Daniels bottle and label design is covered by a number of registered trademarks and copyrights, and the company has been selling the whiskey since 1866. 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].”   Jack Daniel’s Properties Inc. v. J&M Concepts LLC et al., No. 13-1156, complaint filed (M.D. Tenn. Oct. 18, 2013).  This allegation provides the basis for the complaint claiming trademark infringement, unfair competition and deceptive trade practices.

At first glance, it seems reasonable for Jack Daniel’s to want to protect their trade dress against a surprising similar bottle design such as the new Popcorn Sutton bottle. Offering a Tennessee based whiskey in such a similar bottle would certainly provoke some kind of association with Jack Daniels, and a reasonable customer may mistakenly associate the new Popcorn Sutton bottle with the Jack Daniel’s brand. On the other hand, the “blacked-out” nature of the bottle combined with the label reading Popcorn Sutton may be adequate rebuttal to the “confusingly similar” allegation. While a court may deem the new bottle to be different enough to deny Jack Daniel’s any recourse, it seems very likely that the whiskey behemoth will be successful in stopping the new Popcorn Sutton bottle from hitting the shelves in the future.

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