Maker’s Mark vs. Cuervo, KAH Tequila vs. Crystal Head Vodka: Legal News
KAH™ Day of the Dead™ Tequila Forges Ahead
KAH™ Day of the Dead™ Tequila, launching officially this month, was already generating a strong buzz and goodwill among spirits industry professionals and retailers for its distinctive and artisanal tequilas housed in bottles inspired by “Calaveras” (Mexican sugar skull), when Crystal Head Vodka and parent company Globefill, Inc. filed a complaint in the Central District of California against Elements Spirits, Inc. In the face of the suit, Elements Spirits, Inc. CEO, Kim Brandi, and her company assert that no reasonable consumer, upon encountering the KAH™ Tequila bottle in the marketplace, would believe that it is put out by, sponsored by, or affiliated with Crystal Head Vodka, promoted by actor Dan Aykroyd.
The suit accuses Elements of “unfair competition” by fashioning the design of its bottles with “highly similar product packaging” to Globefill’s Crystal Head vodka allegedly causing “confusion” and “trademark infringement,” as well as trading on Crystal Head’s marketing themes of “Meso-American Day of the Dead celebrations.” A cease and desist letter to Chief Executive Officer, Kim Brandi, followed demanding that Elements Spirits “cease advertising, promoting and/or distributing KAH™ Tequila” and threatened legal action. Brandi and Elements, however, are challenging the accusations by providing strong counter-arguments and evidence that show that KAH™ Day of the Dead™ Tequila, and Crystal Head Vodka are distinctively different products and different spirits, and that the KAH™ Tequilas concept is original, holding trademarks in both the United States and Mexico as a product whose image is specifically tied to Meso-American Day of the Dead/Dia de los Muertos traditions.
Furthermore, Crystal Head is not the first spirits brand to bring to market a vodka using a skull package design. The privilege belongs to Black Death USA, which launched in 1989, and was made in Luxembourg and distributed by Cabo Distributing of California. Black Death became a favorite among Guns n’ Roses guitarist Slash and other popular Rock and Roll musicians and stars of that time.
“If you closely examine both KAH™ and Crystal Head, it is obvious that the ‘confusion’ the Crystal Head people are trying to establish is a moot point,” asserts Brandi. “Crystal Head’s glass human-skull package, which is nearly identical to Black Death’s iconic skull mascot, contains vodka, and there are no obvious or explicit ties to Mexico’s history, culture and Dia de los Muertos. What our products and packaging reflect is that Mexico is Tequila, not vodka.
KAH™ tequila was inspired by and built around whimsical, hand painted Calaveras used in Day of the Dead practices to symbolize the souls of the departed return to join their families and friends in the land of the living.” Confident that KAH™ Day of the Dead™ Tequila stands boldly on its own as a truly unique product line, Brandi and Elements will vigorously defend the lawsuit and file counter-claims and cross-claims.
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Maker’s Mark® Wins Trademark Infringement Litigation Against Cuervo
Maker’s Mark®, one of Fortune Brands’ (NYSE: FO) premium spirits brands, has won a judgment confirming that its distinctive and famous free-form red wax seal coating is a well-known and valid trademark. The April 2, 2010, opinion by Federal Judge John G. Heyburn II, of the United States District Court for the Western District of Kentucky, prohibits Jose Cuervo International, Inc., its affiliates and Cuervo’s United States distributor Diageo North America from the use of a dripping red wax seal on any Cuervo tequila product.
“We’re very pleased that a Federal court has ruled that our unique trade dress and bottle design are proprietary to Maker’s Mark and off limits to our competitors,” said Bill Samuels, president, Maker’s Mark. “Maker’s Mark is unique in many ways, starting first and foremost with our recipe and ending with our iconic red neck coating. We hand dip and personalize every Maker’s Mark bottle … this has been our signature trademark since my mom dipped our very first bottle and always will be. We were confident this would be the outcome, and the formal result is very gratifying.”
In issuing an injunction against future use of any infringing trade dress by Cuervo or its distributor Diageo, Judge Heyburn found that consumers and others might be confused about the origin of Cuervo products bearing a device similar to the iconic red wax seal of Maker’s Mark – even though the Cuervo product in question is a tequila, while Maker’s Mark is a Bourbon whisky – given that the red wax seal is an “extremely strong mark” associated with Maker’s Mark Bourbon.
Maker’s Mark was represented in this litigation by a team from the law firm of Kenyon & Kenyon of Washington, D.C., led by Edward T. Colbert.
Click here for more information about Maker’s Mark and its Trademark Infringement Suit
