You Don’t Have Jack: Small Tennessee Distillery Sued Over Label and Shape of Bottle By Jack Daniel’s

Unknown253006We have another trademark fight where a major company demands the sole right to a common feature or phrase or lettering. In this case, it is Jack Daniel’s Tennessee whiskey that is going after the small distiller of Popcorn Sutton’s Tennessee White Whiskey. The objection is that the white whiskey named for a famed Appalachian moonshiner is using a square-shaped bottling with similar labeling that looks like the square-shaped bottle of Jack Daniel’s.

randalls_2266_3417680brbon_jac1My opposition to the ever-expanding trademark and copyright laws is well known. (For a prior column, click here). Common phrases and symbols are being snatched up as Congress and the Obama Administration continue to yield to every demand for higher levels of penalties and prosecutions. In this case, the company appears to be claiming the right to a bottle shape. However, there are only a few basic bottle shapes as a practical matter for selling and shipping such products. Plenty of products are sold in similarly shaping containers.

The small distillery used to seal their product in mason jars. Ironically, I sometimes buy moonshine for a cocktail that I make called “The Big Daddy.” Various moonshine products are sold in mason jars but there is not a claim of copyright or trademark violations.

402891_169893333116752_1415154613_nMarvin “Popcorn” Sutton would not have stood for such muscle play. The moonshiner wrote a paperback called “Me and My Likker” and recorded videos on how to make moonshine. I have previously read about Sutton who took his own life in 2009 rather than go to prison for making white lightning. I must confess a family interest because I have moonshiners on both sides of my family — both the Irish and Italian sides.

Jack Daniel’s insists that people will be confused by the products and they do have strong similarities. Sutton has used similar lettering, though this lettering is reflective of the signs from the eighteenth century. Notably, the specific font is called by some font sites “the Jack Daniel’s font.” One site notes:

On the Jack Daniel’s Label, various fonts are used for different parts. Its wordmark “Jack Daniel’s”was designed using a serif font, which is very similar to a font called Black No. 7 designed by Stefan Huebsch. The font used for the cursive “Tennessee”is very similar to a font called Jackie_regular Alternative by Dario Muhafara. Both fonts are commercial fonts and you can purchase and download them here and here.

. . .

Unfortunately, we are currently unable to find a free alternative or a font similar to the commercial font identified [in the label]

Trademark laws are designed to avoid consumer confusion and use about a dozen common criteria to determine if there is a “likelihood of confusion.” The most obvious test is a comparison of the appearance, pronunciation, meaning, and commercial impression of the respective marks. There are obvious similarities in the product but also differences. There is also the question of the relatedness of the goods or services. If the goods are satisfying the same purpose or need or use, the change of confusion is greater. Obviously, these goods are closely related. A third test looks at the sophistication of the purchasers or consumers. Would most whiskey drinkers be confused or realize the difference. After all, Jack Daniel’s is something of an icon. Would a regular whiskey drinker pick up Sutton’s in confusion?

California-based Jack Daniel’s Properties Inc., is a subsidiary of Brown-Forman Corp. (That’s right, it is California based!). Jack Daniel’s is the flagship brand of Louisville-based Brown-Forman, which sold 11 million cases of Jack Daniel’s Black Label Tennessee Whiskey last year. Jack Daniel’s whiskey is produced in Lynchburg, Tenn.

Brown-Forman spokesman Phil Lynch has stated “We’ve taken action against many individuals and companies all over the world for infringing in the Jack Daniel’s trademark. We are vigorous in our defense of all our trademarks, and especially Jack Daniel’s.” I do not doubt it, but the question is whether the shape of a bottle in a simple square form should be protected.

What do you think? Would you decide differently in terms of the labels as opposed to the bottle shape?

35 thoughts on “You Don’t Have Jack: Small Tennessee Distillery Sued Over Label and Shape of Bottle By Jack Daniel’s

  1. If I’m going to drink bourbon, and sometimes bourbon is the only thing that will do, I go to Beam’s Devil Cut.

    Interesting fact about square bottles, OS. Learn something new everyday.

  2. When I was a college freshman, one of my roommates went on a run to the liquor store (I don’t know where he got an ID) and asked me if I wanted him to pick up anything. Since he was from an old Philadelphia Main Line family and I didn’t wish to be thought of as an unsophisticated hick from west Texas (which, of course, I was), I asked him to pick me up a fifth of Old Forester, the only brand that quickly came to mind. During the course of that evening, I consumed most of the Old Forester straight up, together with an entire large bag of Cheez-Its. To avoid indelicacy, I will leave the outcome to your imaginations. I have not touched either product since.

  3. In my Old Forest reverie, I forgot to comment on the topic. Surely Jack Daniels does not expect to win based upon the bottle shape, but they may have a sufficient argument on the label to survive a motion to dismiss. It strikes me as week, but I’ve handled some trademark/tradename infringement litigation and agree with joelbwriter’s slippery slope analysis.

  4. I see the square bottle, but I can’t tell what brand of Lickher that’s running down that gal’s leg. Is that Popcorn Sutton or Jose Cuervo? LOL

    I don’t think that’s a good idea to have the flames around all that booze.

    That’s a damn fine bass band imo.

  5. **Mike Mack · Plymouth Regional High School
    I’m always way behind the times, just read that popcorn was dead, guess they got sick of wine in heaven and wanted some sippin’ whiskey. **
    🙂

  6. I am having a hard time accepting that square bottles reduce the risk of breakage during shipping. Square bottles have corners, which would seem to be much like the point where two round bottles touch. So square bottles have four points of contact, as do round bottles, but square bottles have more surface area in contact with other bottles, which would seem to increase the risk of breakage.

  7. As an experiment, I drank 5 shots of Jack Daniel’s followed by 5 shots of Popcorn Sutton’s. I was then blindfolded, and given a taste test to see if I could tell the difference. I failed the test! They tasted identical to me. Not only that, but by the 15th shot, after I removed my blindfold, I could not even tell the difference between the labels! Thus, I conclude, this lawsuit is fully justified and supportable.

  8. Nick and Mike are correct that Frank Sinatra’s well-known fondness for Jack Daniel’s made the drinking it cool. Funny, though, his penchant for Campbell’s Franks and Beans didn’t quite catch on the same way. However, Frank wasn’t the only celebrity who made Jack a favorite. It was also the favorite alcoholic beverage of J. Edgar Hoover, who probably got the idea from Frank after listening-in to his phone calls. Other well-known people who preferred Jack included Winston Churchill, William Faulkner, John Huston, Paul Newman, and Jackie Gleason. I believe that Keith Richards also favored the stuff in his glory days. So far as I know, none were paid to endorse the product while they were living. That kind and breadth of celebrity approval is a more powerful brand enhancer than any paid endorsement.

    • Ralph Adamo,

      Wow I didn’t know that was Winston’s Preference? From what I’ve heard of his drinking he was a profit center all by himself.

  9. going off yet staying on topic is the fact that to put a end to this type of crap. would be to teach the big companies a lesson about their law suits by hitting them in the sales… the people could fight back by not buying jd and going right to popcorn suttons. soon as jd wins this lawsuit.. so what will they do then? attempt to blame that on popcorn sutton too?

    its the only way for the people to begin teaching the big corporations the lessons they need to learn which is obama cant make us buy their products. the more they try to force the issue the more we need to fight back by supporting the smaller companies.. unless jd intends to sue every company who produces whiskey. they will lose

  10. Profit center? Nicely put. Yes, I’m sure that Jack Daniel’s was but one of his many preferences. Some classic lines from Sir Winston…..

    Bessie Braddock: Sir, you are drunk.
    Churchill: And you, madam, are ugly. But in the morning, I shall be sober.

    I have taken more good from alcohol than alcohol has taken from me.

    When I was younger I made it a rule never to take strong drink before lunch. It is now my rule never to do so before breakfast.

    The water was not fit to drink. To make it palatable, we had to add whisky. By diligent effort, I learnt to like it.

    I neither want it [brandy] nor need it, but I should think it pretty hazardous to interfere with the ineradicable habit of a lifetime.

  11. In order to keep a trademark you must defend the trademark if something even comes close.

    Popcorn Sutton must be spinning in his grave like an axle over this. Mason jars (which btw cannot be trademarked ever again as they fall into public domain in terms of shape due to the NEGLECT of Mason, yes that was really his name, in defending his patent and trademark) are how you sell shine.

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