Jack Daniel Vs Jack DeCicco(A tale of two whiskeys)

whiskyflavour.com

Jack Daniel's is a brand of Tennessee whiskey and the top-selling American whiskey in the world.  The whiskey is produced in Lynchburg, Tennessee, by the Jack Daniel Distillery, and has been owned by the Brown-Forman Corporation.

In May last year, DeCicco IP filed a trademark application to the US Patent and Trademark Office for Jack DeCicco’. The application was advertised and on 19^th March 2018, Jack Daniel filed an opposition on the following basis;

·         The likelihood of confusion in the use of the word ‘Jack’ which would cause the public to falsely believe that the two trademarks are linked.

·         Jack Daniel has been using its “world famous” marks in relation to spirits, cocktails, and liquors long before DeCicco applied for its mark

·         The company uses its ‘Jack’ name for a variety of alcoholic beverages, including Gentleman Jack, Jack Lives Here, Jack Honey and Winter Jack

·         DeCicco plans to use the trademark for products similar to Jack Daniel’s. The products recognised are “legally identical” to those identified by Jack Daniel’s and are “deemed to travel through the same channels of trade to the same classes of customers”.

On the basis of the above, Jack Daniel’s argued that it would be “damaged” if DeCicco’s mark is approved and requested that the USPTO should refuse registration.

DeCicco is required to respond to the opposition by 28 April.

Additional information on opposition proceedings before the USPTO

The system for protecting trademark rights in the United States is based on the use of marks and registration of marks.

Any person (natural or legal) who believes that its rights would be damaged by the registration of a mark upon the principal register may file an opposition. Whether a party has the standing to oppose depends on the grounds asserted in the opposition. For example, if an opposer is basing its opposition on the likelihood of confusion with its registered mark, or its common law use, or the owner of an unregistered well-known mark or geographical indication, the opposer must plead, and subsequently prove, that it has priority rights in a confusingly similar mark. Another example of whether an opposer has standing is when it pleads that a mark is descriptive of the goods, in which case the opposer must plead that it is a competitor of the applicant and that the term(s) applied for is needed by other competitors to describe their products.