Fireball Whisky and Trade Dress Protection, Straight Up

This past August, Sazerac, the distillery behind Fireball Cinnamon Whisky, sued Stout Brewing Company over Stout’s malt liquor brand, Fire Flask. And Sazerac does not play around; in 2012 it sued Hood River Distillers over the packaging and branding of its SinFire Cinnamon Whiskey, and in March of 2014 sued Crosby Lake Spirits Co. over its Bison Ridge Canadian whisky, claiming it was confusingly similar to Sazerac’s Buffalo Trace. Sazerac’s Fireball is credited with sparking the wave of cinnamon-flavored liquors across the U.S., and is celebrated at college parties everywhere.

The Complaint

The claim is that Fire Flask’s name and packaging are confusingly similar to Fireball and were willfully designed to “trade on the longstanding goodwill” of the Fireball brand. Sazerac alleges that Fire Flask’s packaging features a “similar” horned demon and color scheme on its label, and has an identical red bottle cap, mimicking Fireball packaging. Sazerac wants (1) Stout to stop using the Fire Flask trademark and product packaging; (2) Stout to publish “corrective advertising in all media” disclaiming any relation between Fire Flask and Fireball; (3) a recall of Fire Flask products; (4) a portion of Fire Flask profits; and (5) a cancellation of the Fire Flask mark soon to be registered for the USPTO in connection with beer. Clearly, Sazerac is serious about protecting its brands.

Trademark Functions

Sazerac is making a lot of claims here, so let’s break them down. A trademark is any recognizable symbol, including words, shapes, colors, sounds, or smells, which identifies the products or services of a particular source from other sources. Trademarks exist to protect consumers; they ensure that companies cannot disguise their goods and intentionally confuse consumers as to who is selling the product or where the product came from. Trademarks also protect the goodwill of the trademark owner through source and quality indication and help to prevent the unfair or bad acts of others. So, a trademark must (1) identify the source of goods or services and distinguish it from others and (2) represent the goodwill associated with that product or service.

Thus, “Fireball” is a trademark that guarantees to the consumer that it’s a whisky produced by Sazerac and will meet Sazerac quality standards. If someone buys Fire Flask mistaking it for Fireball and then dislikes it, it reflects negatively on Sazerac. Sazerac doesn’t control the quality and may lose a customer who will share their mistaken Fireball experience. Conversely, if someone buys Fire Flask mistaking it for Fireball and then likes it, it is still bad for Sazerac because that’s a sale and future customer lost, as the person may continue to buy Fire Flask. Regardless of whether the similarities are intentional, Fire Flask benefits from Fireball’s reputation, branding, and marketing scheme in this hypothetical. It confuses consumers as to what they’re getting and negatively impacts Sazerac’s goodwill and revenue. This is why the complaint also contains unfair competition allegations. Unfair competition generally covers false designations of origins, and misleading descriptions and representations of fact.

Trade Dress

Trade dress, an aspect of trademark law, is the total image of a product, including the size, shape, color or color combinations, texture, graphics, and even particular sales techniques of a product. It includes the shape and design of the product itself and can be any aspect of overall appearance of a product that acts as a symbol distinguishing its goods and identifying its source without serving any other significant function. Generally, trade dress is the packaging or labeling of a product, and in 1992 the Supreme Court clarified that trade dress is like any other trademark and can be inherently distinctive. It’s worth noting that although trade dress generally can be inherently distinctive, product-design trade dress does not enjoy that privilege. Words and packaging together may invoke source connotations, such as TIDE for laundry detergent with its squat, brightly colored bottle, but design alone, like a penguin shaped cocktail shaker, does not enjoy this source identifying function.

Here’s why trade dress is important. Let’s say you’re going to a party and the host asks you to pick up “that delicious cinnamon whisky.” For the sake of argument, let’s say you’ve never heard of it and have no thoughts on whether cinnamon whisky is good, so you ask what it’s called. “I can’t remember, fire something,” says the host, “It’s got a red cap and a red devil or something on a yellow label – oh, and it’s a light colored whisky.” When you go to the store how are you supposed to know if they meant Fireball or Fire Flask on that information? That, in essence, is why Sazerac is filing suit based on trade dress. And you may be wondering why Fireball gets the nod in this situation – this is because it is the senior user of the trademark and trade dress. That is, it used and registered the trademarks before anyone else. Trademark rights, especially when federally registered, are kind of the legal version of “first come, first served [with rights].”

So what about Sazerac’s actual allegations? Fireball versus Fire Flask seems like a legitimate claim, both are cinnamon whiskies with two syllables names, and both start with the word “fire.” However, fire is an everyday word found in the dictionary, and generic or merely descriptive trademarks have little to no protection (and stopping power). So, Fire Flask may have some good arguments as to why its mark is not infringing, or if it is, why it does not matter. Fire Flask may be facing a tougher battle on the trade dress front, though, because trade dress concerns the overall appearance of a product. There is a lot more opportunity to be distinctive and memorable when looking at a product’s packaging overall, as opposed to only its name. And the packaging of both whiskies contains many similar elements, the question is, are those elements distinctive and do consumers automatically think of Fireball alone when they see them? This author thinks there’s a good argument to be made either way, but honestly she’s more concerned with her new taste-testing plans for the weekend.

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One thought on “Fireball Whisky and Trade Dress Protection, Straight Up

  1. Pingback: My Little Latte: Trademarks are Magic | Pop IP Law

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