Is the dripping wax seal of Maker’s Mark famous? What about the Texas Longhorn Football logo – surely that’s famous, isn’t it? While many would say those are famous and indelible American symbols, in the area of trademark law, specifically trademark dilution, there is no easy answer.
Bulleit Brand whiskey was recently forced to address this issue when it comes to the distinct shape of their bottle. In the case of Diageo North America Inc. v. W.J. Deutsch & Sons Ltd., the central argument revolves around whether Bulleit brand whiskey has attained the level of “fame” required under the Trademark Dilution Act to protect its distinctive bottle shape and design from dilution by the defendant Redemption whiskey’s product.
Trademark Dilution
The Lanham Act, the core federal trademark statute, creates federal causes of action for trademark infringement and trademark dilution. In a typical dilution case, the question is whether the defendant “harm[ed] the reputation” of a famous trademark.
The Federal Trademark Dilution Act of 1995 expanded the scope of rights granted to famous and distinctive trademarks under the Lanham Act. The Dilution Act safeguards famous marks against the erosion of their distinctiveness, irrespective of the likelihood of confusion or competition between the goods. Dilution causes of action are normally brought when the defendant’s use of the mark causes either:
- “Blurring”: by which the connection in consumers’ minds between the plaintiff’s mark and the plaintiff’s goods or services is weakened.
- “Tarnishment”: which means that the defendant’s use is unsavory or unwholesome, or the mark is used in connection with inferior products.
However, only “famous” marks are protected against dilution. Under the terms of the Act, courts may look at the following factors (a non-exhaustive list) in determining whether a mark is famous:
- Duration, extent, and geographic reach of advertising and publicity of the mark.
- Amount, volume, and geographic extent of sales of goods or services offered under the mark.
- The extent of actual recognition of the mark.
- Whether the mark is registered on the Principal Register or under earlier federal trademark acts.
Is Bulleit’s Bottle Famous?
Regarding the first and second factors above, Courts have wide discretion in determining if the claimed statuses make it famous. Famous marks usually have some shockingly large figures (100 years use, nearly $100 million in annual advertising budgets, 100s of millions or billions in annual sales, etc.). There are, however, cases with less that can be found famous. These two factors take context of the specific market into place. Rolex for example is a famous mark but they don’t have to sell as much as Toyota, another famous mark, to make their case.
Bulleit has maintained and grown its presence in the market with its current bottle shape since 1999, demonstrating a substantial duration of use. In addition, Bulleit’s parent company, Diageo, invested $20 million in advertising for Bulleit in the year leading up to the introduction of Redemption in 2016, indicating a significant and sustained advertising campaign. Bulleit’s appearances in popular magazines like GQ and Esquire, sponsorships with major sports teams such as the San Francisco Giants, and product placements in hit television shows suggest a widespread distribution and presence. And, at one point Bulleit was the “number one rye whiskey on the market,” with sales topping a half-billion dollars in the four years preceding Redemption’s introduction.
Niche Fame or a Household Name
The degree of recognition of Bulleit’s mark is where the contention lies. W.J. Deutsch argued that Bullet lacks the general fame required by Congress to support a finding of dilution. They suggested that “niche market” fame is insufficient for protection under the Dilution Act, as courts have applied this by determining if the mark is recognizable to the “general public” not a specific market or rising to the level of a “household name.”
The “niche fame” argument poses a challenge, as courts have sometimes been hesitant to recognize marks as famous if their recognition is limited to a specific market or niche. However, famous marks don’t necessarily have to reach the level of household names like Nike or Coca-Cola to gain protection from the statute. The court in Bulleit’s case noted that examples like Tiffany & Co., indicating that fame can exist even without universal recognition. This acknowledgment, that fame doesn’t necessarily equate to universal recognition, suggests that Bulleit’s recognition within the whiskey market could still be sufficient for protection under the Dilution Act.
Again, while courts are hesitant to extend “famous” status to marks with universal recognition only within a specific market, Bulleit’s fame, the extensive advertising, distribution, and presence in popular media suggest that Bulleit could succeed under a trademark dilution claim, despite not reaching the level of universal household recognition.
For additional information regarding the content of this article and how to please contact KJK Brand Enforcement attorney Robert E. Zulandt, III (REZ@kjk.com; 216.736.7259) or Antonio Dempsey (AFD@kjk.com; 216.736.7244).