28 March 2018Trademarks

Jack Daniel’s wants alcohol TM shot down

Jack Daniel’s wants a trademark application for the mark ‘Jack DeCicco’ shot down, according to an opposition filed at the US Patent and Trademark Office (USPTO).

In its opposition, which was filed on March 19, Jack Daniel’s claimed that the public would falsely believe the products associated with the applied-for mark are linked to the well-known whiskey brand.

DeCicco IP filed to register the mark ‘Jack DeCicco’ in May 2017, covering alcoholic beverages and premium spirits in class 33.

Whiskey brand Jack Daniel’s said it has been using its “world famous” marks in relation to spirits, cocktails, and liquors since long before DeCicco applied for its mark.

The trademark ‘Jack Daniel’s’ was registered in 1995 under US trademark number 1,923,981 in class 33 for whiskey. Jack Daniel’s also uses a variety of formative marks in connection with alcoholic beverages, for example, ‘Jack’, ‘Gentleman Jack’, and ‘Winter Jack’.

Jack Daniel’s opposition noted that ‘Jack DeCicco’ begins with the word ‘Jack’, the common element across Jack Daniel’s marks, and the goods covered by the applied-for mark are identical to those associated with the whiskey company’s existing marks.

Accordingly, the goods related to the applied-for mark will likely travel through the same channels of trade to the same customers as those of the Jack Daniel’s brand.

Due to a likelihood of confusion, Jack Daniel’s said it would be “damaged” by the registration of the applied-for mark.

Jack Daniel’s asked the USPTO to refuse registration of DeCicco’s mark. DeCicco must respond to the opposition by April 28.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today’s top stories

Monster Energy targets moving company in TM lawsuit

Cleveland sports site tackles beer festival over TM

Dentons boosts IP practice with Dechert team

Federal Circuit revives Oracle v Google copyright clash

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at

More on this story

7 December 2022   Applying heightened First Amendment protection to a commercial product sets a dangerous new precedent, says Julia Anne Matheson of Potomac Law Group.
28 October 2013   Renowned US whiskey producer Jack Daniel’s has filed a lawsuit against a Tennessee company claiming trademark and trade dress infringement.
23 April 2018   The EU General Court has denied an appeal concerning an alcohol-related trademark, siding with the European Union Intellectual Property Office’s (EUIPO) decision that it was too similar to a previous mark for alcohol.