United States District Court, M.D. Tennessee, Nashville Division
H. SHARP UNITED STATES DISTRICT JUDGE
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.
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.
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.
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).
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).
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.
Sazerac's Claim for Cancellation of the “Double
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 ...