When an alcoholic beverage brand owner creates a popular brand with distinctive and creative elements on its label design, competitors take a big risk in using any of those unique elements on their own labels. This is, even more, the case when the creative and distinctive elements are owned by a large company. Sazerac’s labels for its Buffalo Trace Bourbon featured a buffalo image and the terms “Buffalo” and “trace.” As there was no natural relationship between those elements and bourbon, the elements are distinctive.

When Fetzer Vineyards introduced its 1000 Stories wine, the label featured a buffalo image. But the real problem came when the label also advertised the wine was “bourbon barrel aged.” Sazerac argued that consumers would mistakenly believe that the wine was aged in Buffalo Trace bourbon barrels because of the use of the Buffalo imagery. Sazerac argued that there was a strong association between Buffalo imagery and its bourbon and thus, its use was confusing similar and infringing of its trademarks and trade dress. Sazerac produced a survey showing that 43% of potential customers confused the two brands.

Sazerac had raised similar concerns with other alcoholic beverage deciting buffalo imagery on the label but entered consent and coexistence agreements with other brand owners who featured Buffalo images on beer, wine, and vodka. It did not sue Bison Grass vodka for infringement, even though Buffalo Trace also make a vodka. But in this case, Sazerac was unwilling to agree, probably in large part to the “bourbon barrel aged” language on the label.

The case is going to trial as they have been unable to settle it before trial. It has been an expensive situation for the winery and emphasizes two things: how important trademark and trade dress protection is in this industry and how important it is for a professional clearance search to be performed before a new product goes to launch. There is a cost to clear the branding, but ignoring the risk can be much more expensive in the long run.

Clearing a label involves more than a mere comparison of two product names or two logos. It involves looking at the overall product packaging, label and even bottle and cap design. An experienced professional can provide guidance as to what can and cannot be done to reduce or eliminate exposure to claims of unfair competition and trademark infringement. An experienced trademark attorney can help guide potential changes to alleviate any conflicts or assist in efforts to obtain a consent or co-existence agreement to ensure there are no future claims against the brand. Adding a trademark attorney, especially one with experience in the alcoholic beverage industry, can be a valuable asset to your business team and long term brand protection strategy.