November 18, 2013

Build Your Brand With Unique Product Packaging

by randymichels


When most people think about trademarks, they think about names, slogans, and logos. Product packaging or "trade dress" can also be protected as trademarks as long as it identifies the source or quality of a product.

I live in Nashville, Tennessee, and one of the world's most famous product configurations was developed nearby in Lynchburg, Tennessee by a distiller named Jack Daniel. "Mr. Jack" first sold his whiskey in barrels, kegs and stoneware jugs. Legend has it that Mr. Jack was introduced to the now famous square bottle design by a salesman with the Alton Glass Company in 1895. According to the Official Jack Daniel's Website, Mr. Jack wanted a square bottle since he was a square shooter. More than 100 years later, Jack Daniel's Tennessee whiskey is still sold in a distinctive square bottle.

On April 20, 2010, the owner of Jack Daniel's filed a federal trademark application for the square bottle design. The applicant described the trademark as follows:

The mark consists of the three-dimensional configuration of the square shaped bottle container for the goods, having an embossed ridge or scalloped design on the neck portion of the bottle, and an embossed signature design comprised of the words "JACK DANIEL."

The application matured into a federal registration on February 28, 2012.

Jack Daniel was known to have a temper. He died in 1911 from a blood infection after he broke his toe kicking his safe in anger. It is perhaps fitting that the current owner of Jack Daniel's also has little patience for competitors who imitate the company's trademarks.

Recently, Jack Daniel's filed a trademark infringement lawsuit in Federal Court in Nashville against one of its competitors. According to the Complaint, the makers of Popcorn Sutton's Tennessee White Whiskey are using a bottle design that is confusingly similar to Jack Daniel's square bottle design.

The Complaint notes that Popcorn Sutton's Tennessee White Whiskey is named for a moonshiner named Marvin "Popcorn" Sutton who committed suicide in 2009 rather than go to prison for various crimes relating to his illegal moonshine operation. Popcorn Sutton was once featured on the TV show "Moonshiners" on the Discovery Channel.

Just like Jack Daniel thought his whiskey to be so unique that it required a distinctive bottle, Popcorn Sutton thought so highly of his moonshine that he believed it should it be sold in an eye-catching bottle rather than a mason jar. The Complaint quotes Popcorn Sutton as saying "My whiskey is too good to be in a damn jar."

The makers of Popcorn Sutton's Tennessee White Whiskey have yet to respond to the allegations made by Jack Daniel's, but I think we know how Popcorn Sutton would have responded if he was still alive. Before committing suicide, Popcorn Sutton reportedly bought himself a tombstone on which he had inscribed "Popcorn Says F@#k You."

When choosing a trademark, do not limit yourself to just names, slogans, and logos. You can also brand your business by using unique product packaging. If you decide to use trade dress to impress your customers, however, it pays to have a federal trademark registration in case you ever need to enforce your rights against a competitor.

Update: The Spirits Business reported on May 6, 2014 that Jack Daniel's dropped its trademark infringement lawsuit against the makers of Popcorn Sutton's Tennessee White Whiskey after the brand agreed to change its bottle design.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.