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Inc. v. Sazerac Co., Inc.

United States District Court, M.D. Tennessee, Nashville Division

February 3, 2017

PRICHARD'S DISTILLERY, INC., Plaintiff,
v.
SAZERAC COMPANY, INC., d/b/a A. SMITH BOWMAN DISTILLERY, and BUFFALO TRACE DISTILLERY, INC., Defendants.

          MEMORANDUM

          KEVIN H. SHARP UNITED STATES DISTRICT JUDGE

         Pending before the Court are cross-motions for summary judgment. Plaintiff Prichard's Distillery, Inc. (“Prichard's”) filed a Motion for Partial Summary Judgment challenging Defendants' Sazerac Company, Inc., d/b/a A. Smith Bowman Distillery, and Buffalo Trace Distillery, Inc (“Sazerac”) counter claim, requesting cancellation of Prichard's trademark for “Double Barreled.” (Docket No. 47). Sazerac filed a Motion for Summary Judgment on all claims in Prichard's Complaint as well as all claims in Sazerac's Counter Complaint. (Docket No. 49). For the reasons stated below, the Court will deny both Plaintiff's and Defendants' Motions for Summary Judgment.

         BACKGROUND

         Prichard's is a distillery located in Tennessee that makes and sells spirits, including bourbon. In connection with this business, Prichard's owns two trademarks at issue in this case: “Benjamin Prichard's Double Barreled Bourbon” (U.S. Trademark Registration No. 2, 809, 224) and “Double Barreled” (U.S. Trademark Registration No. 4, 420, 193). (Docket No. 1 at 2-3). The first trademark was registered on January 27, 2004 and has become incontestable. (Docket No. 1 at 2; 1-1). The second was registered on October 22, 2013. (Docket No. 1-2). Defendant Sazerac owns two distilleries, Buffalo Trace and A. Smith Bowman, which also distill various spirits including bourbon. (Docket No. 65 at 1-2). Both Prichard's and Sazerac use the phrase “double barreled” on their bourbon packaging. Because Prichard's owns the trademark to this phrase, it believes that Sazerac's use amounts to trademark infringement and unfair competition.

         The term “double barreled” refers to the way in which bourbon is aged; the bourbon is aged in one barrel before being moved to a second. Additionally, Prichard's claims that its use of “double barreled” is a double entendre, alluding not only to the way in which the bourbon is aged, but also to the “toughness and strength associated with, inter alia, double-barreled shotguns.” (Docket No. 53 at 5-6). Sazerac, on the other hand, claims that “double barreled” is a process, and is therefore not a protectable trademark due to either genericness or mere descriptiveness. (Docket No. 49). Consequently, Sazerac does not believe its use of “double barreled” infringes on Prichard's trademark.

         LEGAL STANDARD

         Summary judgment is proper if “there is no genuine issue as to any material fact [such that] the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). But “summary judgment will not lie if the . . . evidence is such that a reasonable jury could return a verdict for the non-moving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In considering a motion for summary judgment, the court must construe the evidence in the light most favorable to the non-moving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). The movant therefore has the burden of establishing that there is no genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Barnhart v. Pickrel, Schaeffer & Ebeling Co., 12 F.3d 1382, 1388-89 (6th Cir.1993). But the non-moving party “may not rely merely on allegations or denials in its own pleading.” Fed.R.Civ.P. 56(e)(2). See Celotex, 477 U.S. at 324; Searcy v. City of Dayton, 38 F.3d 282, 286 (6th Cir. 1994). The non-moving party must present “significant probative evidence” to show that there is more than “some metaphysical doubt as to the material facts.” Moore v. Philip Morris Co., 8 F.3d 335, 339-40 (6th Cir.1993).

         The standard of review for cross-motions of summary judgment does not differ from the standard applied when a motion is filed by only one party to the litigation. Taft Broad. Co. v. U.S., 929 F.2d 240, 248 (6th Cir.1991).

The fact that both parties have moved for summary judgment does not mean that the court must grant judgment as a matter of law for one side or the other; summary judgment in favor of either party is not proper if disputes remain as to material facts . . . [.] Rather, the court must evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration.

Id. (citations omitted).

         ANALYSIS

         Both parties move for summary judgment on Sazerac's counterclaim seeking cancellation of Prichard's' “double barreled” trademark. (Docket Nos. 47 & 49). Additionally, Sazerac moves for summary judgment on the remaining claims against Sazerac in Prichard's' complaint: (1) federal trademark infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1114; and (2) common law trademark infringement and unfair competition. Sazerac also moves for summary judgment on its remaining claims against Prichard's in its counter complaint for (1) a declaration of noninfringement and (2) cancellation of Prichard's' trademark “Benjamin Prichard's Double Barreled Bourbon.” (Docket No. 49).

         I. Sazerac's Claim for Cancellation of the “Double Barreled” Trademark

         Generic marks are never capable of receiving trademark protection. Generic marks are “those that ‘refer to the genus of which the particular product is a species[.]'” Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 636 (6th Cir. 2002) (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)).” “A generic term is one which is commonly used as the name of a kind of goods.” Gimix, Inc. v. JS&A Grp., 699 F.2d 901 at 905 (7th Cir. 1983). The question of whether a term is generic, and therefore not a protectable trademark, is a question of fact. “A trademark that has been federally registered is presumed to be not generic and the defendant must overcome the presumption.” Gaylord Entm't Co. v. Gilmore Entm't Grp., 187 F.Supp.2d 926, 936 (M.D. Tenn. 2001) (citing Bath & Body Works, Inc., v. Luzier Personalized Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir. 1996)). In determining whether a mark is generic, courts may consider “dictionary definition, competitors' use, plaintiffs' use, media usage, national testimony by people in the trade, and consumer surveys.” Id. (citing Nat'l Baseball Hall of ...


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