No Redemption for This Whiskey Bottle
Diageo, brand owner of Bulleit bourbon, recently defended its victory against W.J. Deutsch & Sons, owner of Redemption whiskey. The lawsuit claimed that the round shouldered “canteen-style” bottle utilized by Redemption was similar to the designed used by Diageo.
The main purpose of a trademark is to identify the source of a product, and to distinguish a specific manufacturer from the products of another. A trademark can be a word, logo, image, phrase, or packaging, used to identify a particular product. Trade dress, an extension of trademark law, provides protection for the visual appearance of goods or services and packaging. Businesses, individuals, and legal entities can all own trademarks, and owners of trademarks can take legal action against those who use a trademark without authorization. Consumers often rely on specific product packaging, characteristics, colors, and designs to easily identify certain brands. Moreover, the protection of these elements helps companies, businesses, and individuals ensure that their reputation remains intact through preventing others from unjustly reaping financial benefits by capitalizing on another entity’s branding.
But when it comes to product designs for bourbon and whiskey bottles, how similar is too similar? On February 14, Bulleit Bourbon brand owner Diageo defended a legal victory after a lengthy lawsuit against Deutsch Family Wines & Spirits Redemption Whiskey over this very question.
Diageo initially sued Deutsch Family Wine & Spirits in 2017 for trademark and trade dress infringement. The complaint alleged that the brand’s whiskey bottle had been “revised to closely mimic” its bourbon and rye whiskey brand, Bulleit. The claim further alleged that the overall appearance of Deutsch Family’s revised product packaging was “strikingly similar to that of Diageo’s Bulleit bottle and copies the same vintage style and appearance.” Specifically, Diageo cited Bulleit’s “clear canteen-shaped glass bottle with rounded shoulders” among other distinctive features that lend credence to Bulleit’s distinguishing features and reputation.
In June 2022, a Jury determined that the Redemption bottle design did not infringe on Bulleit’s trademark. However, the jury did find that the bottle design diluted the distinctiveness of Bulleit’s trade dress, even though the bottle design did not infringe on Bulleit’s trademark. Based on the jury verdict, the Court issued a permanent injunction, which ordered Deutsch Family “to undertake a change to the Redemption glass bottle and packaging that will convey a substantially different commercial impression ….. [that the] Redemption package must have no superficial, at a glance, resemblance to the Bulleit bottle.”
Deutsch Family appealed and requested that Redemption be able to continue selling products with the current packaging pending the outcome of the appeal. In November 2022, Deutsch’s request was denied by the Second Circuit, and the brand was ordered to cease all sales of any products with the “diluting” packaging.
This ruling raised an interesting question of how much “fame” is sufficient to support a finding of trade dress dissolution. An attorney for Deutsch argued that Bulleit did not have the “household-name level of recognition” needed to justify the lower court’s 2022 dilution ruling. However, one of the judges indicated uncertainty about Deutsch’s argument that a high degree of fame was necessary to justify the lower court’s decision ordering Deutsch to redesign its bottle. One of the judges asked the attorney, “Just because some brand isn’t Nike or Disney doesn’t mean that it’s not famous, right?”
When it comes to establishing “fame” in trademark dissolution cases, it is a relatively high bar to clear. In a 2012 Federal Circuit case, the court held that a “famous mark” is one that has become a household name. Federal law restricts dilution claims to those few marks that are truly famous. The suit between Diageo and Deutsch emphasizes the difficulty surrounding dilution claims with brands that may fall on the lesser-known spectrum of famous, or brands that may be famous within their individual fields but lack universal recognition.