Sloppy Trade Dress Is Not a Good Look

Sloppy Trade Dress Is not a Good Look by Mark S. KaufmanThe federal Court of Appeals for the Second District of New York rendered an interesting opinion in a case about trade dress. In Diageo North America, Inc. v. W.J. Deutsch & Sons Ltd. et al., the litigants (“Diageo” and “Deutsch,” respectively) are well established players in the spirits business — though Diageo dwarfs Deutsch in size, resources and one would expect, the number of in-house lawyers.

The original lawsuit was over the allegedly infringing trade dress in whiskeys by Deutsch, particularly the bottle design of Diageo’s BULLEIT brand bourbon. Deutsch brought counterclaims against the industry giant, asserting that it was not infringing because Diageo did not have a valid trademark in its alleged trade dress for a variety of reasons.

The Court found that much of what Diageo calls trade dress are instead elements that are essential, and dictated by the function to be performed by the bottle. These included the clear glass; the oval “old medicine bottle” shape, which makes it easier to hold and to put in a pocket; the arched text that’s embossed on the bottle so that if the cheap label comes off, you still know what you’re drinking; and the geometric designs to bring the consumer’s attention to the name of the product. Calling those elements functional, the Court said those are good enough arguments to deny dismissing the Deutsch’s counterclaim that the so-called “trade dress” is not worthy of trademark protection, but is instead functional.

Another issue is that Deutsch claimed Diageo abandoned the trade dress because there are other bottles out there that look similar, including, for example, Highland Park whisky. By allowing others to use similar “trade dress,” plaintiff had allowed the trademark to get weaker.

Note: Whisky is from Scotland, WhiskEy is from the Southern states in the United States.

Another counterclaim that was not dismissed by the Court was one for fraud. The defendant said Diageo defrauded the Trademark Office by asserting that it had exclusive rights to use this trade dress, when in fact it was aware (or should’ve been aware) that there are many other similar if not identical bottles out there used for medicine, alcohol, and sometimes alcoholic medicine. By claiming that they were uniquely situated to have a trade dress and a trademark in this product’s dress, Deutsch argued, Diageo’s application was fraudulent. At this stage of the litigation, the Court agreed.

I thought it curious that the Court felt “geometric designs to bring the consumer’s attention to the name of the product” were functional, as grabbing the consumer’s attention seems to be exactly what trade dress is designed to do.

Honestly, I’m impressed that one of the largest companies in the beverage industry could be kicked back at this initial stage of a lawsuit. It illustrates the point: Don’t be scared by Goliath. If there are arguments to be made, load ‘em into your slingshot and let ‘em fly.

Mark S. Kaufman


Mark S. Kaufman
Kaufman & Kahn

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New York, NY 10017
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