Where do the Buffalo Roam?

Buffalo TraceTwo days ago, Buffalo Trace owner (and serial litigant) Sazerac, found itself on the wrong end of a lawsuit involving its trademark.  The case – Sazerac Company Inc. v. Fetzer Vineyards – was brought by Sazerac in federal court in the Northern District of California in the autumn of 2015.  At issue was Fetzer’s logo for its 1000 Stories Zinfandel.

In the original Buffalo Trace Complaint, Sazerac claimed that Fetzer’s logo infringed on its federally registered trademarks, constituted unfair competition and trade dress infringement, violated its common law trademarks and was a violation of California laws relating to fair competition.

In April, the U.S. District Court awarded summary judgment in favor of Fetzer with respect to a slew of Sazerac’s claims of infringement.  At that same time, the Court dealt an additional significant blow to Sazerac in ruling that it would be unable to recover monetary damages for any infringement that might ultimately be found in the case – a result of Sazerac’s failure to make key disclosures as it prosecuted the case.

1000 StoriesNow, following a bench trial in June, this same Court has ruled in favor of Fetzer on all remaining counts.  The Court’s Order is unequivocal, and remarkably candid in its criticism of Sazerac’s claims – providing in its introductory paragraph that “in the final analysis, this case was not close.”  To see just how badly Sazerac lost this one, a reader need only look at some of the headings used by the Court in its analysis:

  • The Trade Dresses are not Similar
  • There was No Evidence of Fetzer’s Intent to Infringe in Creating 1000 Stories
  • The Evidence of Intent to Infringe after Product Launch Is Thin at Best
  • There is No Evidence of Consumer Confusion
  • Other Buffalo Marks Highlight the Weakness of Sazerac’s Claim of

This was, in the purest legal sense and with all due respect to Sazerac, an ass-kicking.

There is one aspect of the case which Sazerac may find particularly troubling – and which relates to that last bullet point above.  Sazerac has made a habit of entering into co-existence agreements with other beverage manufacturers which use (or want to use) buffalo images in their products.  The Court seized on this as evidence (not the only evidence – but nevertheless some of the evidence) that there are so many alcoholic beverage products using buffalo imagery in their marketing that the commercial strength of Sazerac’s trade dress is relatively weak.  Specifically, the Court stated:

Their commercial strength is questionable. Sazerac offered little evidence demonstrating that its Buffalo Trace trade dress or marks have “actual marketplace recognition.” It pointed to its continuous and exclusive use of the marks, its sales of millions of bottles of bourbon bearings [sic] the marks, its extensive advertising using the marks, and awards associated with the brand.  Nonetheless, the only relevant survey results indicated that consumers had low awareness of the Buffalo Trace brand. Further, it is not listed as a “major brand” by the Distilled Spirits Council of the United States, and its sales are ranked eighteenth among bourbon sales in the country.  When considering that evidence in the context of the widespread use of buffalo marks by others in the alcoholic beverage industry, I am not convinced that Sazerac’s Buffalo Trace trade dress is commercially strong.

Wow.  The Court is essentially saying to Sazerac “your bourbon isn’t as popular as you think it is, and your marks are lousy” – the legal equivalent of the schoolyard taunt that “you’re ugly and your mother dresses you funny.”

Hey Sazerac – can we get you some aloe for that burn?


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