Fire Water Trademark Dispute Heats Up Some Interesting Claims About the Age-Old Term
When Sazerac sued Hood River Distillers over a
trademark dispute alleging there’d be confusion between Hood’s cinnamon whiskey
“Sinfire” and
Sazerac’s Firewater and Fireball
liquors, it got
a lot of press. As with most legal battles, that initial press
petered out and the case has been progressing without any more fanfare.
Quite a few people focused their energies in that original
milieu of analysis of the merits of the claim scrutinizing the claim’s merit
based on whether or not Sinfire was similar enough to Firewater or Fireball so
as to be confusing to the average cinnamon liquor connoisseur. After
all, a product that markets itself on the promise that it “burns like hell” or
that it “turns up the heat” caters to a particularly discerning palate. You probably want to make sure you’re getting
the level of heat/burn you desire.
In December the federal district court in Kentucky transferred
the case to Oregon on Hood’s motion stating that Kentucky didn’t have
jurisdiction over Hood because at the time to suit was filed, not a drop of
Sinfire had entered the bluegrass state.
The parties are now through their original pleadings, the
complaint that Sazerac filed, the answer and counterclaim that Hood filed, and
the answer to that counterclaim.
In an interesting development, the counterclaims and answer
allege and deny, respectively, a new argument raised by Hood against Sazerac’s
Firewater and Fireball trademarks… they’re generic nature. Hood asserts that the terms Firewater and
Fireball are generic terms for liquor with some pretty convincing allegations,
at least about the term “fire water”, if not so convincingly for “fireball”:
“Fire Water” is defined in various dictionaries to mean:
“[s]trong liquor, especially whiskey,” AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (4th ed., Houghton Mifflin Company, 2000); “alcoholic liquor: now humorous,”
WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY, (2nd ed., Dorest & Baber
1983); and “strong alcoholic drink,” WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY (Merriam Webster, Inc., 1993).
…
On information and belief, Sazerac had actual knowledge prior
to filing the Complaint in this action that “fire water” means any alcoholic
liqueur among consumers.
…
A “fireball” is an alcoholic drink that includes an alcohol
and a spicy flavoring element, such as cinnamon or hot sauce.
…
Published recipes for alcoholic drinks refer to drinks that
include an alcohol and a spicy flavoring element, such as cinnamon or hot
sauce, as a “fireball.”
…
The primary significance of the term “fire water” to the
purchasing public is an identification of a beverage being an alcoholic
beverage, such as liqueur.
…
The primary significance of the term “fireball” to the
purchasing public is an identification of a beverage being an alcoholic
beverage, including one comprising of whiskey, and including a spicy flavoring
element, such as cinnamon or hot sauce.
As the industry is budding with a myriad of different new
products and manufacturers in liquor, wine, and beer, there are only so many
clever puns, plays on themes or memes that people can accomplish without
starting to repeat each other. This
repetition is creating a serious need for craft producers to check on trademark
registrations BEFORE naming a product to ensure that a not-so-friendly cease
and desist letter, or worse a lawsuit, doesn’t arrive in the mail after the
product launch.
That’s not a statement about the merits of this
Sinfire/Fireball dispute, but it is an increasingly common event that requires
some forethought.
As for the Firewater/Sinfire case, we’ll keep
you posted on the merits and happenings – with an eye to the claims about the
generic nature of the Firewater name because it could end up clarifying some
interesting points about the merits of trademarks and the resulting suits for
the rest of us.
