Sixth Circuit "Distills" the Application of the "Trademark Use" Test to Trademark Infringement Cases
June 14, 2018 - Peristyle Holdings purchased the Frankfort, Kentucky property on which Old Taylor(R) Bourbon was originally distilled in 1887. Entrepreneurs Will Arvin and Wesley Murry had hopes of renovating the property to once again distill a world class bourbon at that location. When it was purchased, it came with signage that identified it as the "Old Taylor Distillery" on the barrel storage warehouse and "The Old Taylor Distillery Company" above the doors to the main building. Despite the proprietors of Old Taylor(R) leaving the signage up and not objecting to its continued display by other owners for decades, Sazerac seized upon the existence of the historic signage in an attempt to support the allegation that Peristyle was infringing their mark and had committed acts of false advertising. Further acts of "infringement" were alleged due to Peristyle's use of the name to identify the location of their entrepreneurial endeavor until they could come up with a name for the distillery that would eventually produce their bourbon.
Sazerac argued that Peristyle's commercial activity at the site and description of the real property at which their distillery would be built amounted to infringement, but the court found that this simply "walks up the wrong aisle." The issue wasn't whether Peristyle had begun commercial activity at the site, but whether they had used the "Old Taylor" name in the context of describing the property itself rather than in branding its goods. This was an easy race to handicap for everyone except Sazerac. Summary judgment was granted for Peristyle.
One of Sazerac's arguments on appeal was that it was inappropriate for the trial court to use the trademark use test as a threshold before considering the elements of infringement. Under the Sixth Circuit's "trademark use" test, a plaintiff must demonstrate that a defendant is actually using the mark to identify a source of goods or services before affirmative defenses and any elements of infringement can be considered. Unable to meets its burden under this threshold test, Sazerac's suit could not go forward. The court also rendered judgment for Peristyle on Sazerac's false advertising allegation since there was nothing false about indicating their presence at the property of the "Former Old Taylor Distillery."
The opinion is worth reading for its clear and concise description of the affirmative defense of fair use in trademark law, for its explanation of the Sixth Circuit's threshold "trademark use" test, and for its effort to differentiate whiskey from bourbon whiskey. Special thanks to attorney and friend Elizabeth Hughes for bringing this opinion to my attention, given my well known interest in the intersection of whiskey and trademark law. The Sixth Circuit opinion can be found at http://www.opn.ca6.uscourts.gov/opinions.pdf/18a0113p-06.pdf and is also attached below.
Sazerac argued that Peristyle's commercial activity at the site and description of the real property at which their distillery would be built amounted to infringement, but the court found that this simply "walks up the wrong aisle." The issue wasn't whether Peristyle had begun commercial activity at the site, but whether they had used the "Old Taylor" name in the context of describing the property itself rather than in branding its goods. This was an easy race to handicap for everyone except Sazerac. Summary judgment was granted for Peristyle.
One of Sazerac's arguments on appeal was that it was inappropriate for the trial court to use the trademark use test as a threshold before considering the elements of infringement. Under the Sixth Circuit's "trademark use" test, a plaintiff must demonstrate that a defendant is actually using the mark to identify a source of goods or services before affirmative defenses and any elements of infringement can be considered. Unable to meets its burden under this threshold test, Sazerac's suit could not go forward. The court also rendered judgment for Peristyle on Sazerac's false advertising allegation since there was nothing false about indicating their presence at the property of the "Former Old Taylor Distillery."
The opinion is worth reading for its clear and concise description of the affirmative defense of fair use in trademark law, for its explanation of the Sixth Circuit's threshold "trademark use" test, and for its effort to differentiate whiskey from bourbon whiskey. Special thanks to attorney and friend Elizabeth Hughes for bringing this opinion to my attention, given my well known interest in the intersection of whiskey and trademark law. The Sixth Circuit opinion can be found at http://www.opn.ca6.uscourts.gov/opinions.pdf/18a0113p-06.pdf and is also attached below.
| 18a0113p-06.pdf |