Timeless Spirits sues Bacardi over trademark
US-based vodka maker Timeless Spirits has filed a lawsuit against Bacardi, alleging that it infringed on its ‘Moments Matter, Make Them Timeless’ trademark.
Timeless Spirits and Drinks filed a complaint against Grey Goose owner Bacardi in the US District Court for the Southern District of Texas, Houston Division, earlier this week.
The lawsuit alleges trademark infringement, unfair competition and trademark dilution.
Founded in 2019 by Amber Ferrell-Steele, Texas-based Timeless Spirits has owned the trademark ‘Timeless Vodka Moments Matter, Make Them Timeless’ since November 2020.
The slogan has been used since 2019 to market ultra-premium brand Timeless Vodka and appears on its bottle.
In 2021, Bacardi filed a trademark application for the slogan ‘Make Moments Matter’ for use on alcoholic beverages, including vodka.
In response, Timeless sent a cease-and-desist letter to Bacardi in July 2022 to highlight the similarity with its registered trademark.
In November 2022, Timeless filed an opposition to Bacardi’s trademark application over its likelihood to cause confusion. Bacardi then withdrew its application in 2023.
Bacardi refuses grant
According to the lawsuit, Ferrell-Steele applied for a grant in 2020 from Bacardi’s Backing the B.A.R programme, which sponsored Black-owned spirits businesses.
She claims that her grant application, which significantly featured the slogan, was denied by Bacardi. The application featured a video where Ferrell-Steele expressed the importance of the ‘Moments Matter’ slogan to her brand.
Ferrell-Steele alleges that Bacardi has been prominently using her trademark across its own marketing.
The lawsuit noted one example of its use in November 2021, when Bacardi launched a digital holiday catalogue and, in an article from ForeverBermuda.com, a spokesperson said: “We make moments matter when we surprise and delight our friends and family with a thoughtful gift.”
Another article featured a quote from Bacardi chief financial officer Tony Latham, who said: “As 2022 brings new perspective, people are coming together with a strong desire to ‘make moments matter’.”
Despite Bacardi withdrawing its trademark application, Timeless alleges that Bacardi continues to use the phrase across its social media marketing and on its website.
Since its launch, Timeless Vodka is said to have sold more than 26,000 bottles, which are available across stores in Texas, throughout the US and from the brand’s website.
The company argues that there is a likelihood of consumer confusion because both the registered mark and Bacardi’s use of the phrase are similar due to the words ‘moments matter’.
The lawsuit also pointed out that both companies operate in the spirits industry, and Timeless and Bacardi’s products are sold in the same stores.
Timeless believes that consumers may falsely sense that its business is linked with Bacardi through source, sponsorship or affiliation.
As such, Timeless feels that Bacardi’s use of the trademark could cause ‘irreparable damage’ to its business, including the loss of sales.
Timeless Spirits is seeking monetary relief and an order to prevent Bacardi from using the slogan.
The Spirits Business has approached Bacardi for comment.
Bacardi is the largest privately held international spirits company with a portfolio that includes Dewar’s whisky, Patrón Tequila, Bombay Sapphire gin and Martini vermouth.
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