A case originating in the Southern District of Florida called Allied Lonestar v. Lonestar Distillery recently found itself before the Fifth Circuit. The dispute was over the alleged trademark abandonment of Allied’s Cowboy Little Barrel Whiskey, and whether Lonestar subsidiary Garrison Brothers infringed by selling its Cowboy Bourbon.
The evidence Allied presented as proof (pun unintended) of using the mark was a document showing that they had sold 5,000 cases of the bourbon, which is hardly a significant sale. Even worse, plaintiff later admitted that such order was sold after the lawsuit was commenced. That’s something that is considered confusing to the jury (or possibly fraudulent…), and that’s why the first trial was thrown out.
In the second trial, Allied successfully showed “Cowboy Bourbon” on a list of products…but it was a list of products they planned on selling in the future. The legal term for that is lame. It’s kind of surprising that they would bother to submit such a list. Not surprisingly, they lost at trial.
Arguing that the jury instructions weren’t proper, Allied made a motion for new trial, which was denied by the District Court, and then appealed the same issue to the Fifth Circuit. The appellate court affirmed the District Court’s decision, saying that Allied waived the option to object by not specifically preserving its objections at the trial. In fact, Allied only had two objections that had been denied at trial, and they had nothing to do with the objections to the jury instructions.
The Fifth Circuit noted that there’s a two-step process to determine whether a trademark is abandoned: (a) the mark’s use is discontinued, and (b) whether the trademark owner has an intent to renew use of the trademark.
In this case, having failed to use its trademark for three years or more (the statutory non-use period for a presumption of abandonment), the burden shifted to plaintiff to establish its intent to resume use. However, the defendant showed that:
- The plaintiff had no inventory of COWBOY LITTLE BARREL whiskey products;
- The plaintiff lacked the required certificate from the Alcohol and Tobacco Tax and Trade Bureau, which was necessary to allow it to sell those products in the U.S.; and
- The plaintiff had never advertised COWBOY LITTLE BARREL Whiskey products in U.S. trade publications, or had its products reviewed by whiskey critics.
This case illustrates the importance of reviewing the facts before bringing a lawsuit. No inventory or sales or advertising of allegedly infringed products? The word “abandonment” leaps to mind, and that’s not a great place to begin. Plaintiffs would be well advised to make certain that they have a viable lawsuit, and if there is an appeal, to review the record and determine if the appeal is viable.
