Sazerac says ‘double-barreled’ cannot be coined
Sazerac has moved to throw out a lawsuit that claims the term “double-barreled” is a protected trademark, arguing one company “cannot possibly” trademark the phrase.
Prichard’s Distillery sued Sazerac – maker of Fireball Cinnamon Whisky – last year for using “double-barreled” on its whiskey labels, citing the company has been selling a “Double Barreled Bourbon” for more than 10 years and owns two trademark registrations on the wording.
However, last week Sazerac said Prichard’s had no legal trademark rights to enforce, according to reports by Law360.
“Plaintiff cannot possibly own protectable trademark rights in the term because it is a generic for an ageing process that is commonly used in the industry for making distilled beverages,” the distiller said in a motion for summary judgement.
“Even if the court were to conclude that the term ‘double-barreled’ is merely descriptive, as opposed to generic, the plaintiff has not acquired the requisite secondary meaning that would give rise to a colourable claim of trademark rights.”
Furthermore, Sazerac also highlighted its use of the term on labels was protected by descriptive fair use.
“Sazerac uses the term ‘double barreled’ to fairly and accurately describe the ageing process by which its Bourbon is crafted and not as an indicator of the source of the product,” the firm wrote.
In August 2014, Prichard’s sued Sazerac in light of the brand’s Buffalo Trace Experimental Collection Double Barrelled Bourbon and it’s A. Smith Bowman Limited Edition Double Barrel Bourbon Whiskey.
Prichard’s owns trademark registrations on Benjamin Prichard’s Double Barreled Bourbon and the phrase Double Barreled for selling spirits.
The firm’s legal representative, Nathan Bailey, said the business’ mark is “clearly a double entendre”.
“Although the mark may describe some aspects of a process used to make Prichard’s Double Barreled product, the mark also conjures in the mind the commonly used meaning of the term in connection with a firearm,” he wrote in a statement.