Bob Dylan’s whiskey brand targeted in infringement suit
The name of Bob Dylan’s whiskey brand, based on the singer’s 1973 hit “ Knockin’ on Heaven’s Door”, is at the centre of a trademark lawsuit filed last week.
Kentucky-based Heaven Hill Distilleries filed the complaint (pdf) against Heaven’s Door Spirits, which was co-created by Dylan, at the US District Court for the Western District of Kentucky, Louisville Division on Friday, August 17.
The Kentucky-based, family-owned distillery accused Heaven’s Door Spirits of trademark infringement, trade name infringement, and unfair competition.
Heaven Hill said it has been using the ‘Heaven Hill’ mark (registered under number 693,986) in connection with alcoholic beverages, including whiskey, since 1937 in the US. The Kentucky distillery owns the trade name for the term.
Other trademark registrations include ‘Old Heaven Hill’ (number 355,451), for use in connection with whiskey. Heaven Hill also has a design registration for ‘Heaven Hill Distillery Est 1935’ (number 5,242,398).
But 80 years after Heaven Hill acquired protectable exclusive rights in its ‘Heaven Hill’ mark, the Dylan’s whiskey company allegedly started using the mark ‘Heaven’s Door’.
In 2017, Dylan’s company applied to register the ‘Heaven’s Door’ mark in the US for use in connection with distilled spirits (application number 87/401,073). Heaven’s Door also filed to register a figurative design mark last year.
The suit alleged that the disputed mark is confusingly similar to Heaven Hill’s registered marks and is used in connection with identical goods, sold through overlapping trade channels, to an identical group of consumers.
Heaven Hill noted that the marks share an identical first word followed by a four-letter, single-syllable word, printed in block capitals. The marks have a similar visual appearance and consumer connotation, the distillery claimed.
In April, Heaven Hill said it discovered that the Alcohol and Tobacco Tax and Trade Bureau had issued certificates of label approval relating to the launch of American whiskey products by Heaven’s Door.
In response to this discovery, “Heaven Hill decided to take action”, the suit explained.
The Kentucky distillery said it sent a cease-and-desist letter to Heaven’s Door, but Dylan’s company responded that no likelihood of confusion would occur and so no action was necessary.
Heaven Hill then asked a consumer survey expert to conduct a survey on whether a likelihood of confusion will ensue. In July, the expert found there to be a high likelihood of confusion, with a net confusion rate of 39% occurring in the control group surveyed, according to the complaint.
Heaven Hill has asked the court for injunctive and monetary relief, in addition to reasonable attorneys’ fees.
Speaking to WIPR, a spokesperson for Heaven's Door said the company's trademark applications have been examined and approved by the US Patent and Trademark Office and the allegations made by Heaven Hill are "completely without merit". Heaven's Door will "vigorously defend" its brand, the spokesperson said.
The spokesperson added that each bottle of Heaven's Door whiskey references Dylan's famous song alongside images of metalworks designed by the singer.
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