Jack Daniel's in trademark battle with start-up whiskey company

Renowned US whiskey producer Jack Daniel’s has filed a lawsuit against a Tennessee company claiming trademark and trade dress infringement.

The lawsuit, filed by Jack Daniels’s parent company Brown-Forman Corp, is in response to changes to the packaging and labeling of a new producer called Popcorn Sutton Distilling.

Like Jack Daniel’s, Popcorn Sutton originates from Tennessee, but unlike the older company, it produces white whiskey and is currently only available in four US states.

It is named after Marvin “Popcorn” Sutton, who committed suicide in 2009 ahead of a prison sentence for the illegal production of homemade whiskey, commonly referred to as moonshine.

The whiskey was originally sold in Mason jars, a common type of glass jar, but was remarketed in 2012 when it switched to a square-shaped bottle.

Jack Daniel’s, which was founded in 1886 and is marketed across the globe, claims the bottle’s new design causes confusion and infringes on its intellectual property.

The lawsuit, filed on October 18 at the US District Court for the Middle District of Tennessee, says the Jack Daniel's packaging has been "a consistent commercial impression" for decades, and that it is part of "one of the oldest, longest-selling and most iconic consumer products."

It adds that marketing products in similar packaging is likely to cause purchasers and prospective purchasers of the product to “believe mistakenly” that it is a new Tennessee white whiskey product in the Jack Daniel's line.

According to Peter Berger, attorney at Levisohn Berger in New York, the case depends on the distinctiveness of Jack Daniels’s bottles.

“If the bottle design is reasonably distinctive then Popcorn Sutton is in for an expensive lawsuit,” Berger said.

“The packaging and label is clearly distinguishable but unless the bottle shape is fairly common, Popcorn Sutton will have to spend to defend.”

The complaint adds that the defendants’ “willful and deliberate” infringement has caused and will continue to cause irreparable harm.

Brown-Forman, which declined to comment on the case, is demanding Popcorn Sutton stop using its new bottle design and is calling for the destruction of all allegedly infringing promotional materials.