Heaven Hill Distilleries, Inc. v. Log Still Distilling, LLCHeaven Hill Distilleries, Inc. v. Log Still Distilling, LLC
Case Information
UNITED STATES DISTRICT COURT WESTERN DISTRICT OF KENTUCKY LOUISVILLE DIVISION
HEAVEN HILL DISTILLERIES, INC. PLAINTIFF v. Nо. 3:21-cv-190-BJB-CHL LOG STILL DISTILLING, LLC DEFENDANT
* * * * *
O PINION & O RDER “Storytelling is everything.” – Log Still marketing team
I. Two Distillers, One Story
During the 19th century, pioneering Kentucky distillers like Jacob Beam, Elijah Craig, E.H. Taylor, Jr., and Robert Samuels transformed frontier whiskey into what we now know as bourbon, “the only spirit distinctive to the United States.” S. Res. No. 110-294, 153 C ONG . R EC . S10822 (2007). Their legacies include iconic bourbons branded with their names even today.
Among their ranks is Joseph Washington “J.W.” Dant, who in 1836—at age 16—began distilling bourbon in an unusual way: he poured it through a hollowed poplar log. From those humble roots, he and his many children started their own successful brand bearing his name. It still exists. But today J.W. Dant bourbon is distilled and sold rather more conventionally by Heaven Hill, another family-owned distillery that acquired the brand decades after the Dant family sold it.
Seventy-five years after that sale, J.W.’s great-great-great-grandson John Wallace “Wally” Dant III and some of his cousins set out to “restore” their family’s place in Kentucky bourbon history by building a new distillery, line of spirits, and tourist destination. “Log Still Distilling,” founded in 2018 and named after J.W.’s original method of distilling, produces its Monk’s Road bourbon and gin at the “Dant Crossing” campus in Nelson County—the site of a shuttered distillery where previous generations of Dants lived and worked.
If the new venture had stopped there, it might not have spent its early years before the Patent and Trademark Office and U.S. District Court. But Log Still decided to “subtly [tie] the new distillery to the J.W. Dant name.” Plaintiff’s Exhibit
1
(PX) 25 at 3. Its website describes a “heritage” and “Dant Legacy” revived by Log Still “one barrel at a time.” PX 16 at 1. “Our story,” the website asserts, “begins with our forefather Joseph Washington Dant,” who “gave birth to the Dant family’s place in bourbon lore with a legacy all our own.” Id. Now the “rebirth of the J.W. Dant legacy” is marked by “the latest generation of Dant distillers.” PX 27 at 11. “[W]e’re the Dant family,” social media proclaimed, “and we’re back in the bourbon business.” PX 34 at 15.
This is not strictly accurate: the J.W. Dant brand of bourbon and spirits never left. The Dant Distillery Company, founded in 1870, sold the J.W. Dant brand, trademarks, and goodwill in 1943. Heaven Hill acquired them in 1993. Now Log Still is utilizing the J.W. Dant name in a manner that has confused consumers regarding the relationship between the two brands—and is likely to cause more confusion in the future. By trading on the goodwill associated with the story of Joseph Washington Dant and his 19th century log, today’s Dants and their 21st-century Log Still threaten Heaven Hill with irreparable harm to the control of its brand and trademarks.
Log Still Distilling offers attractive products wrapped in a compelling story. But that story is associated with Heaven Hill’s bourbon, not Log Still’s—and Log Still knew this when it set out to “subtly” tie the two together. PX 25 at 3. Federal trademark law bars Log Still from using these trademarks and goodwill to sell spirits that compete with the J.W. Dant brand sold off long ago by an earlier generation. The new generation may distill its own bourbon and promote its own brand, but not by executing a marketing strategy that leverages the old brand. That would infringe Heaven Hill’s marks. And the record at this early stage contains more than enough evidence to conclude Heaven Hill will likely prevail on the merits of its infringement claim and suffer irreparable harm in the meantime, entitling it to a preliminary injunction.
II. The Two Brands [1]
A. J.W. Dant
1. The Dant Distillery Company. Joseph Washington Dant began distilling whiskey in 1836 by “running it on a log.” According to the family legend, he ran a copper pipe through a hollow log, filled the pipe with fermented mash, and passed steam through the pipe. Hearing Testimony of Wally Dant, Tr. Vol. I (DN 60) at 262; Hearing Testimony of Bernie Lubbers, Tr. Vol. I at 191. In 1870, J.W. Dant built a distillery called The Dant Distillery Company, Inc., which produced J.W. Dant- branded whiskey. Id . J.W. Dant fathered seven sons, all of whom worked in the distilling industry. Dant, Tr. Vol. II (DN 62) at 106–7; Defense Exhibit (DX) 26 at 1.
In 1902 J.W. Dant passed away, leaving a will asking that “no whiskey
subsequently made be branded with my name.”
John P. Dant Distillery Co. v.
Schenley Distillers, Inc.
,
The brand and its trademarks changed hands several times in the mid-20th century, a period when most of the Dants left the distilling industry. Hearing Testimony of Max Shapira, Tr. Vol. I at 65–66, 139–40; Dant, Tr. I at 263–64, 276;
PX 24. After George W. Dant died in 1943, United Distillers of America purchased
the Dant Distillery and all its assets.
John P. Dant Distillery
,
2. Heaven Hill. This large family-owned distilling company produces many high-volume brands including Evan Williams, Elijah Craig, and Old Fitzgerald. See Shapira, Tr. I at 54–58. It also continues to produce J.W. Dant, a far smaller label that offers a bourbon, vodka, gin, blended whiskey, and more. Shapira, Tr. I at 65– 70; PX 5. Since 2004, J.W. Dant sales and revenues have declined by more than half. PX 5 at 1; Shapira, Tr. I at 84–88, 155–56. But Heaven Hill has revived other historical brands, like Old Fitzgerald, and if conditions allow, contends it could do the same with J.W. Dant. Shapira, Tr. I at 55–58, 122–23.
J.W. Dant bourbon
Bargain-hunters may find J.W. Dant bourbon for $15 to $18 on the bottom shelf of liquor stores in most states. Shapira, Tr. I at 70–71; PX 6 at 11. Heaven Hill doesn’t feature J.W. Dant among the 19 bourbons that appear on its website, and spends next to nothing to market the label—less than $12,000 over 16 years for all J.W. Dant liquors, compared to the millions it spends each year to market the rest of
4
its products. PX 5 at 1; Shapira, Tr. I at 67, 159–62, 166; DX 29. More than 65,000 annual visitors to Heaven Hill’s current distillery and tourism center in Bardstown might read about J.W. Dant—but only on a small poster in a corner. See Shapira, Tr. I at 77; PX 4 at 2. Heaven Hill’s new visitor center—opened in 2021—presents J.W. Dant only somewhat more prominently, alongside other bottled-in-bond labels. PX 4 at 4; Shapira, Tr. I at 78–80. And J.W. Dant appears in some of the distillery’s tasting programs. Shapira, Tr. I at 78–81, 150–53. The visitor center sells the bourbon on site, but offers no J.W. Dant merchandise. Id . at 81, 150–53.
Based on this price point, sales volume, and advertising, Log Still contends the once-proud brand has deteriorated on Heaven Hill’s watch. Log Still Opposition Brief (DN 37) at 17. According to Log Still’s expert, only 2.1% of bourbon consumers recognized the J.W. Dant logo mark—far less than many other brands. DX 59 at 17– 19. This study, though hardly bulletproof according to Heaven Hill’s rebuttal expert, at least corroborates what Heaven Hill’s own sales and marketing numbers tell us: J.W. Dant is a relatively small brand in a hot and crowded bourbon market. . Indeed, Dant sales comprise less than 1% of Heaven Hill’s sales today, even though other “bottled-in-bond” brands represent a larger (and growing) share of the company’s sales. Shapira, Tr. I at 156–57.
Heaven Hill draws a very different conclusion, however: this small brand sells itself. And at an attractive profit margin. Rather than spending on ads, Heaven Hill sells to existing customers without needing to prompt them. Shapira, Tr. I at 67; see, e.g. , PX 6 (newspaper articles on J.W. Dant products); Lubbers, Tr. I at 196–201. The brand remains recognized and desirable to its loyal customer base, which “pulls” the bottles off the shelf without any advertising stimulus. And the company promotes J.W. Dant bourbon as part of its Bottled-in-Bond Certified-Premises program at liquor stores in Indiana and Kentucky, as well as in some advertisеments. PX 6; Shapira, Tr. I at 67, 163; Lubbers, Tr. I at 192–95, 228.
5
Heaven Hill’s Bottled-in-Bond Certified-Premises Display (Motion for Preliminary Injunction (DN 4) at 9) B. Log Still
In 2018 several of J.W. Dant’s descendants—Wally Dant III, Lynne E. Dant, and Charles Douglas Dant—founded Log Still Distilling, Inc., which now goes by Log Still Distillery. PX 24 at 1–2; Dant, Tr. I at 260:3–7. They purchased the former site of the Dant & Head distillery (by then a mothballed wooden-truss factory) in Gethsemane, Kentucky and invested millions in a new distillery, bottling operation, rickhouse, and massive campus that they named Dant Crossing. PX 24 at 2; Dant, Tr. I at 260–62; Tr. II at 44. It opened in 2021. Log Still also recently began selling bourbon and gin in liquor stores around Kentucky under the Monk’s Road brand.
Dant, Tr. I at 279:2–14; Tr. II at 62:14–21.
These entrepreneurs knew their family’s name remained a part of the bourbon trade today. But Wally Dant thought he and his cousins “could do better with” the brand than Heaven Hill had. PX 24 at 1–2, 35. In the spring of 2019, Wally Dant twice met with Max Shapira, the president of Heaven Hill, to discuss purchasing the J.W. Dant brand. Shapira said Heaven Hill valued the brand and would not sell it, though he was willing to consider a joint venture or licensing agreement. Shapira, Tr. I at 98–101; Dant, Tr. I at 265; PX 7.
But Wally Dant still wanted a name that “related to the history of the family,” including J.W. Dant. PX 24 at 2. So the distillery’s marketing team developed the name Log Still: given its relationship to Joseph Washington “running it on a log” back in 1836, the concept “create[d] a perfectly positioned name for building brand equity in the family history & subtly tying the new distillery to the J.W. Dant name.” PX 25 at 1. The name, they concluded, “creates direct ties to the J.W. Dant name whether the brand can be used or not.” Id. The new distillery’s name, logos, branding, social
6
media, and marketing strategies all invoke these themes: “reviving a legacy,” “heritage revived,” and “reviving the Legacy one barrel at a time.” See PX 24 at 2; PX 27 at 7–8; PX 32 at 10; PX 48 at 4–7.
While developing this campaign, the marketing team used J.W. Dant marks— such as the font and color of the J.W. Dant logo, the year 1836, and the circular kernel logo—as reference points for Log Still’s potential marks. PX 22; PX 24 at 10; PX 28. Not all these design ideas made the final cut, to be sure. And while the current Log Still logos might be influenced or inspired by the Dant marks, they are not just knock- offs. Log Still and J.W. Dant marks 18-D-36 Crest and D-A-N-T Kernels logos Log Still’s website was less “subtl[e].” PX 25 at 3 (Log Still Brand Strategy Brief at 1). To start, the company obtained the URL jwdant.com and (until this litigation) used it to redirect traffic to the Log Still website. Dant, Tr. II at 21–23; PX 30 at 1–2. Wally Dant testified that this did, or at least could, refer to his initials rather than Joseph Washington Dant’s. Dant, Tr. II at 136. This strains credulity. His cousin and Log Still’s head distiller Lynne Dant apparently didn’t rеad the initials that way: “speaking of our ol’ great-great J.W,” she remarked in an email thread discussing Joseph Washington, “I believe we now own the URL
7
JWDant.com…since we keep mentioning the name, can we go ahead and map that URL to logstilldistillery.com?” PX 30 at 3. Indeed they did.
What did readers find when they reached logstilldistillery.com?
Images from Log Still’s website (PX 16 at 1–2) “Our story begins with our forefather Joseph Washington Dant,” who “gave birth to the Dant family’s place in bourbon lore with a legacy all our own. In 1836 he started a story of heritage and Kentucky bourbon has flowed through our family’s veins ever since.” PX 16.
“Reviving the Dant Legacy one Barrel at a time.” Id.
“Heritage Revived.” Id.
“[S]even generations later, we’re building something new.” Id . “And because family is at the heart of what we do, we view every bottle as a nod of respect to the past. Log Still is Wally Dant’s tribute to his father, forefathers and their contribution to bourbon history.” . Log Still’s social media posts on Facebook and Instagram (PX 33–34; Germain Supplemental Report (DN 30-7)) were still more explicit in connecting the new and old brands:
It’s “time to tell you a little story about reviving a legacy.” PX 33 (6/14/21).
“We owe the bourbon in our blood to him, as we work to revive a legacy, one generation at a time.” Id. (6/17/21).
A “legacy all our own” that was “celebrating the past” and “giving a toast to the future.” Id. (6/19/21).
Three posts (PX 33–34; DN 30-7 at 3) even feature the actual trademarked J.W. Dant logo and bottles.
8 What about Log Still’s actual products? Today, at many fine establishments in Kentucky, or at Log Still’s Dant Crossing campus, you can pick up Log Still’s Monk’s Road bourbon for $80 or grab two varieties of gin for around $30 each. Dant, Tr. II at 128:6–16. These stout square bottles display the same tagline: “[t]his is a story of heritage & revival.” PX 17. The labels go on to assert that “Joseph Washington Dant started this tradition way back in 1836 when he felled a poplar tree.” . (emphases added). That is of course not literally true, at least not unless we adopt such a broad interpretation of “this tradition” that it would encompass and connect both Dant Distillery and Log Still Distillery—the sort of unwarranted affiliation that trademark law exists to prevent. See below at § III.A(3). Yet the bottles double down on this stylized story by also presenting the “18-D-36” crest logo and a date: “est. 1836.” PX 17; Hearing Testimony of Tim Earnhart, Tr. Vol. II at 174, 199; Dant, Tr. II at 44.
9
Dant Crossing is the name Log Still gave its 350-acre campus, which includes a lake, trails, an amphitheater for concerts, a bed-and-breakfast, a restaurant, and the Log Still distillery. Earnhart, Tr. II at 174:10–24, 180–81; Dant, Tr. II at 64–66, 71; PX 14 at 1–2, 16. The name fuses severаl Dant family connections: the Dant & Head distillery sat there, J.W. Dant was produced there, and several Dants lived on the land. Dant, Tr. I at 260–62; Dant, Tr. II at 116–18. And the “Crossing” echoes the railroad that did and will pass through the property. . The campus—about 10 miles from Heaven Hill’s visitor center—also fuses the Dant Crossing and Log Still brands. PX 14; Shapira, Tr. I at 80–81; Earnhart, Tr. II at 174, 180–81; PXs 38, 40, 44–46. A story board discusses the history of J.W. Dant and Log Still, for example, and the tasting room is walled by barrels stenciled with “The Dant Distillery Company,” a common-law trademark registered to Heaven Hill. PXs 41–43; PX 52 at 29. This campus already receives a large number of visitors, and the crowds will only increase as Log Still expands and joins the Kentucky Bourbon Trail Craft Tour. Dant, Tr. I at 279:23–80:8, Tr. II at 74:7–15, 82:21–83:25, 116–18; PX 24 at 7–8; PX 48 at 21; PX 53 (submission for Craft Tour guide).
C. Legal Proceedings
Log Still and its marketing team have long been aware that many of their actions could lead to “threats” such as “legal challenges” from Heaven Hill. PX 24 at 7; PX 26 at 1.
They were right. In response to social-media posts, Heaven Hill sent three cease-and-desist letters to Log Still. PXs 8, 12, 13. Heaven Hill also challenged Log Still’s attempts to trademark Dant & Head before the Trademark Trial and Appeal Board. PX 9. This caused Log Still to abandon the petition and the Board to find for Heaven Hill. ., Ex. B at 3. Log Still maintains it attempted to comply with Heaven Hill’s demands. Dant, Tr. II at 144. But Heaven Hill nevertheless sued for trademark infringement and unfair competition. “If we let the control of our brand, the control of the history[,] and heritage of our brand slip away,” the president testified, then “we’re really in real danger of losing control over the entire brand.” Shapira, Tr. I at 127:18–21.
Heaven Hill also asked the Court to preliminarily enjoin Log Still from using the Dant name “in connection” with spirits and order it to remove several logos, posts, and more. DN 4, attachment 8. After expedited discovery and briefing, the parties presented evidence and argument at a two-day hearing. The companies offered testimony from their presidents and marketing employees, as well as written reports from three dueling experts. DN 55; Tr. II at 3–7. [3]
III. Heaven Hill’s Entitlement to a Preliminary Injunction
A preliminary-injunction request requires a court to consider “(1) whether the
movant has a strong likelihood of success on the merits; (2) whether the movant would
suffer irreparable injury without the injunction; (3) whether issuance of the
injunction would cause substantial harm to others; and (4) whether the public
interest would be served by issuance of the injunctiоn.”
City of Pontiac Retired Emps.
Ass’n v. Schimmel
,
A. Likelihood of success on the merits
Likelihood of success in a trademark-infringement case turns on whether the
defendant’s actions would likely cause consumer confusion. A trademark is “any
word, name, symbol, or device ... used by a person ... to identify and distinguish his
or her goods, including a unique product, from those manufactured or sold by others
and to indicate the source of the goods, even if that source is unknown.”
1. it owns the registered trademark,
2. the defendant used the mark in commerce, and 3. the use was likely to cause confusion.
Hensley Mfg. v. ProPride, Inc.
, 579 F.3d 603, 609 (6th Cir. 2009) (citing
1. Trademark Ownership: Heaven Hill owns and uses valid J.W. Dant trademarks
Heaven Hill owns four trademarks at issue: two J.W. Dant images, one J.W. Dant word mark, and one for “The Dant Distillery Company.” PX 52 at 29. The Dant Distillery Co. assigned all trademarks and “good will” associated with the J.W. Dant brand to Schenley in 1953. PX 1 at 1, 2. When Heaven Hill purchased the brand in 1993, it acquired all these trademarks and associated “goodwill.” PX 2 §§ 1.1–1.2.
Log Still raises two arguments against Heaven Hill’s ownership of the three “J.W. Dant” marks, and their ongoing validity. Neither finds support in law or fact.
First , Log Still argues that Heaven Hill has allowed the quality and sales of J.W. Dant to fall so far that the brand has lost its associated goodwill, leaving nothing for other users to infringe. LS Opp. Br. at 27–30. But Log Still cites no law for the contention that changes in a product’s quality or market position could surrender its trademark protections. Abandonment, perhaps the legal concept most analogous to Log Still’s position, requires “both non-use and intent not to resume use.” Yellowbook Inc. v. Brandeberry , 708 F.3d 837, 848 (6th Cir. 2013). Neither is apparent here. Although the J.W. Dant recipe has changed, its sales have declined, and the brand was sold as part of a much larger transaction, none of that shows the brand’s goodwill has evaporated entirely. PX 5; Shapira, Tr. I at 138–40.
To the contrary, the J.W. Dant marks are incontestably valid. A trademark is
“incontestable” if it is registered and continuously used in commerce for five or more
years without challenge.
See
Second
, Log Still speculates that Heaven Hill may not have lawfully acquired
the brand. LS Opp. Br. at 27–28. J.W. Dant’s will allegedly requested that the brand
no longer continue under his name after his death, for one.
Id.
at 27. And Heaven
Hill has not convinced Log Still that it can trace its purchase back to The Dant
Distillery, for another.
Id.
at 27–28. This is hard to swallow: a judicial decision in
this district and the president of Log Still agree that The Dant Distillery produced
J.W. Dant long after the death of J.W. Dant and then sold the rights to Schenley in
the 1950s.
John P. Dant Distillery
,
Given the evidence that the trademarks at issue are incontestably valid and were lawfully acquired—and the dearth of contrary evidence—Heaven Hill has established its ownership and control of the trademarks at issue.
2. Trademark Use: Log Still uses Heaven Hill’s J.W. Dant marks to identify its own commercial products
a. Use of a mark.
Is Log Still “using the challenged mark in a way that
identifies the source of [its] goods”?
Hensley Mfg.
,
Log Still is using J.W. Dant, his story, and the date 1836 to sell products and
reap goodwill associated with the J.W. Dant brand.
See, e.g.
,
National Distillers
Products Corp. v. K. Taylor Distilling Co.
,
b. Use of a name.
But does the law allow Heaven Hill to exclusively control
the commercial use of the name J.W. Dant? LS Opp. Br. at 22–27. Today it does.
The law protects trademarked names, and the history and legacy of the J.W. Dant
name is wrapped up in the goodwill associated with the J.W. Dant brand. “When,”
as here, “a name is used as a trademark, it risks becoming a symbol of the corporation
and its past accomplishments and losing its individual identity.”
Levitt Corp. v.
Levitt
,
A century ago, J.W. (Wally) Dant may have had a stronger case to sell bourbon
by using his ancestor’s name or the initials they share. 19th-century courts
recognized a “sacred right” to use one’s own name as a mark, even if someone else
used the name first. 2 M C C ARTHY § 13:7;
Basile, S.p.A. v. Basile
,
Courts eventually recognized, however, that names could confuse as easily as
any other trademark.
See L.E. Waterman Co. v. Modern Pen Co.
, 235 U.S. 88, 94
(1914). “The name of a person or a town may have become so associated with a
particular product that the mere attaching of that name to a similar product, without
more, would have all effect of a falsehood.”
Herring-Hall-Marvin Safe Co. v. Hall’s
Safe Co.
,
association with the original company); L.E. Waterman Co. , 235 U.S. at 94–96 (requiring defendant to use full name and a disclaimer).
Today courts show even less solicitude to personal names.
See Basile
, 899 F.2d
at 39–40. For better or worse, business names are increasingly associated with
products and brands on a national and depersonalized scale.
Id
. Like any other
trademark, a “junior user’s right to use his name thus must yield to the extent its
exercise causes confusion with the senior user’s mark.”
Id
. at 39. So “any residual
protection of the second comer’s use of his own name” receives more attention as a
matter of remedy rather than infringement, according to “the more general principle
that an equitable remedy should be no broader than necessary to correct the wrong.”
Id
.;
see also Soltex Polymer Corp. v. Fortex Indus., Inc.
,
c. Goodwill associated with a trademark. Setting aside Log Still’s use of the name J.W. Dant, however, may Log Still use the goodwill associated with the J.W. Dant trademarks in the liquor marketplace? The Supreme Court has characterized goodwill as “the expectancy of continued patronage,” or the “total of all the imponderable qualities that attract customers to the business.” Newark Morning Ledger Co. v. United States , 507 U.S. 546, 555–56 (1993) (describing subscriber goodwill for tax purposes) (quotation omitted). And trademarks embody goodwill— the “expectation of continued business”— in the “minds of the buying public.” 2 M C C ARTHY § 2:17.
Junior users’ actions that claim another organization’s “history as their own”
implicate “the goodwill of the marks they are prohibited from using.”
vonRosenberg
v. Lawrence
,
d. Log Still uses J.W. Dant marks to market its products and Dant Crossing. This caselaw addressing trademark use and goodwill reveals another, broader point: this case’s fact pattern is not that unusual. In this cycle,
Owners sell (or executives depart) a company, leaving behind its goodwill and trademarks;
They re-enter the market by founding a company or joining a competitor; They try to boost the new venture by emphasizing their connections to the old one;
The incumbent company—still in business—objects to someone else trading on its goodwill. See, e.g., Levitt ,593 F.2d at 468–69; K. Taylor ,31 F. Supp. at 613–14; Denney ,758 F. Supp. at 142–43.
That’s basically what happened here, though the events transpired across
three centuries and seven generations. The original J.W. Dant built a brand that
rested in part on his role and reputation in Kentucky’s early days as a bourbon
hotbed. His sons and grandsons continued in the business, occasionally fighting for
control of the family name and marks.
See
n.2 above (discussing
John P. Dant
Distillery
,
Stories and history matter for many brands, but especially for bourbons, whose
consumers respond to the traditions and founders of “America’s Native Spirit.” S.
Res. No. 110-294, 153 C ONG . R EC . S10822 (2007). “Distillers compete intensely on
flavor, but also through branding and marketing; the history of bourbon … illustrates
why strong branding and differentiation is important in the distilled spirits market.”
Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc.
,
Context and text alike make clear that Log Still is “reviving the Legacy” of J.W. Dant—and doing so in order to launch a competing distillery. In most contexts, such as the bottle labels, Log Still expressly refers to Joseph Washington Dant. See, e.g., PX 28 at 2 (Wally Dant asking to use Joseph Washington instead of J.W., but the initials highlighted gold). To the extent Log Still now argues that some mentions of Dant refer primarily to the founders’ shared family surname, see LS Opp. Br. at 24– 25 (“discussion of the historical connection between Joseph Washington Dant and Log Still’s founders that share the last name”), context indicates otherwise. Even if an innocent or ambiguous explanation might apply to a few generic references to “Dant,” those would be overwhelmed by surrounding references specific to the legacy of Joseph Washington Dant. Marketing material shows his Mosaic visage, his frontier story, and his role in the industry’s founding. Log Still proudly presents this legacy in a manner reminiscent of other Kentucky bourbon forefathers: Beam, Craig, Crow, Taylor, Van Winkle, Williams, and the like. Log Still devotes little attention to any other Dant ancestor. See, e.g. , PX 24 at 2; PX 27 at 11; PX 32 at 11; PX 48 at 2–3 (all focusing on Joseph Washington Dant).
Nor can the Court credit the notion that mentions of “J.W. Dant”
predominantly refer to Log Still founder John Wallace “Wally” Dant, rather than the
Dant Distillery Company founder Joseph Washington Dant.
See
LS Opp. Br. at 24–
25 (“Log Still owner John Wallace Dant III’s use of his own name and signature”);
Dant, Tr. II at 45–46, 136. References to J.W. Dant appear throughout Log Still’s
marketing. But its brand strategy used the old “J.W.” in a manner that distinguished
him from the younger entrepreneur: “The rebirth of the J.W. Dant legacy with the
latest generation of Dant distillers.” PX 27 at 11. This continued into the concept
deck, which surmises that “J.W. Dant” would not believe the “impact his original Log
Still would have in the year 2020.” PX 32 at 11. Obviously the “legacy” being
“revive[d]” is Joseph Washington’s, not Wally’s.
Id.
And even if we assume many of
the uses might refer to Wally, the question is not Log Still’s intent but consumers’
understanding. Businesspeople do not enjoy a “sacred right” to use their names in a
manner that could confuse consumers of trademarked products.
See
§ III.A(2)(b);
Levitt
,
Log Still plainly states that its “products are built from [Joseph Washington’s] story. From ideals of [our] fоrefathers.” PX 27 at 8. The thrust of its plan to build a brand was to “revive,” “follow,” and connect to the “legacy” and “heritage” of J.W. Dant. PX 24 at 2; PX 27 at 11; PX 32 at 11; PX 48 at 2–3. This is not merely describing history or a family connection; it is appropriating the goodwill of an existing brand. Log Still refers to the J.W. Dant marks in a trademark sense—“in a way that identifies the source of [its] goods,” not just in a descriptive sense to accurately describe names, locations, and history associated with the products. Hensley , 579 F.3d at 610–11. Although many of the statements discussed in this litigation, if read narrowly and literally, refer to J.W. Dant’s history (and not to the spirits that bear his name today), the record indicates that Log Still’s principal motivation is to sell its competing spirits and tourist offerings—not simply to reminisce about family history.
These themes didn’t remain confined to a marketing pitch. Today they appear throughout Log Still’s website, which Log Still uses to identify its distillery and products with J.W. Dant’s legacy. Images from Log Still’s website discussing J.W. Dant (PX 16 at 1–2) Log Still’s social media posts on Facebook and Instagram show the same consistent trademark use. See PXs 33–34. Many of the posts reflect the material on the website and themes presented in the concept decks. Three of the posts even feature the J.W. Dant logo or bottles. The first shows a group surrounding the actual J.W. Dant mark. The second shows two executives from Schenley—ironically, the company that purchased J.W. Dant from United Distillers—with a bottle of the J.W. Dant-labeled bourbon that Heaven Hill sells today. PX 34 at 7; Dant, Tr. II at 30–31.
Log Still’s Facebook page also posted a set of old pictures showing packages and bottles of J.W. Dant. Germain Supplemental Report (DN 30-7 at 3); see also PX 13 at 1–3 (cease-and-desist letter citing examples of Log Still posts with J.W. Dant bottles).
So when Log Still said it was “time to tell you a little story about reviving a legacy,” that obviously referred to J.W. Dant’s legacy. PXs 33–34 (collecting Facebook and Instagram posts). Other posts recalled similar themes described in the marketing plans and on the website. One included a picture of J.W. Dant and read “we owe the bourbon in our blood to him, as we work to revive a legacy, one generation at a time.” Id. Another referred to “our forefather,” a “legacy all our own,” “celebrating the past,” and “giving a toast to the future.” Id. The only point of all this is to tie the launch of the new distillery to the history and legacy of the old оne in order to sell spirits and attract tourists.
Assorted Log Still Instagram posts (PX 34)
And these messages point to another, independent, reason why Log Still
cannot pass off its marketing as permissible “descriptive” use: the content is
inaccurate. Accuracy is inherent in the caselaw’s discussion of good-faith and non-
trademark use; a word or mark cannot fairly describe something unless it does so
correctly.
See Sazerac
,
e. Caselaw confirms this view. One of the Sixth Circuit’s leading trademark-use decisions also involved a dispute over rights to a name and place steeped in bourbon lore. Colonel E.H. Taylor crafted the modern bourbon industry by mixing traditional distilling with innovative marketing, finance, quality control, and lobbying. See Sazerac , 892 F.3d at 855. By the 2000s, the Sazerac distilling conglomerate controlled the E.H. Taylor trademarks and continued to produce bourbons under that name. . at 856. But in 2014, two entrepreneurs formed Peristyle LLC and bought the tumbling-down distillery Colonel Taylor had built outside Frankfort (in the style of an ancient European castle) back in 1887. Id. at 855. While Peristyle renovated the building, and before renaming it for the new “Castle & Key” label, “the company regularly referred to the location as ‘the former Old Taylor Distillery”’ or simply ‘Old Taylor.’” Id. at 856. After Sazerac protested, the Sixth Circuit held this was not trademark infringement because it was not trademark use:
Peristyle used the Old Taylor name in а descriptive and geographic manner. It referred to Old Taylor to pinpoint the historic location where Peristyle planned to make a new bourbon, not to brand that bourbon. Keep in mind that Peristyle has not begun selling its bourbon. It won’t hit the shelves for four years. When it does hit the shelves, the bourbon will be called Castle & Key and Peristyle does not plan to put “Old Taylor” on the bottle.
Id. at 857.
Despite Log Still’s embrace of the Sazerac ruling, however, the Sixth Circuit’s decision is distinguishable in all the wrong ways. Log Still’s use of J.W. Dant is neither “descriptive” nor “geographic.” Id. Dant & Head, not the Dant Distillery Company, distilled on the site Log Still now calls Dant Crossing. Log Still does not refer to J.W. Dant to pinpoint a historic location, but to brand its new bourbon. Log Still’s bourbon and gin are already on the shelves, and nothing suggests the spirits’ branding is temporary. Although those bottles are named Monk’s Road, their labels feature Joseph Washington Dant’s 1836 origin story. Monk’s Road Label – Back (PX 17 at 3) [5] This case bears a closer family resemblance to another Taylor distilling dispute whose result is less helpful to Log Still: National Distillers Products Corp. v. K. Taylor Distilling Co. , 31 F. Supp. 611 (E.D. Ky. 1940). The aforementioned E.H. Taylor eventually sold the distilling company he founded with his sons. Id. at 612–13. Then one of the sons joined a different distillery, which changed its name to K. Taylor. Id . at 614. The new company’s pamphlets described its “Taylor-Made Whiskies,” included pictures of E.H. Taylor, and connected his quality and history to the new brand. Id . at 614–15. This showed “a deliberate purpose and design on the part of the defendant to secure the benefit of the good will and reputation” associated with the E.H. Taylor brand, and thereby to confuse the public. Id . at 615. While the labels were visually “dissimilar,” the Taylor family name was by then so associated with E.H. Taylor that adding a K and other differences failed to prevent confusion. Id . Even during that earlier era, in which courts gave proprietors broader latitude to use their own names in the marketplace, see § II.A(2)(b) above, the K. Taylor company improperly “convey[ed] to the public the impression that defendant was the successor to E. H. Taylor,” and did so without any disclaimer. Id . at 616. The Sixth Circuit later recognized that placing the name Taylor on a bottle did not helpfully describe some aspect of the product for consumers; it just helped sell the product: What descriptive value did adding “Kenner Taylor” to a bottle of bourbon provide to the consumer? None. It served only tо dupe the public into thinking that Kenner Taylor bourbon was a successor to Old Taylor bourbon. That’s quintessential use as a trademark and quintessential exploitation of the Taylor brand’s goodwill.
Sazerac
,
Like K. Taylor, however, Log Still is impermissibly tying its brand to ancestral history associated with a famous brand it does not own. Id. at 857. Its products are plastered with references to J.W. Dant and his history. Take their labels. They begin with the same tagline: “this is a story of heritage & revival.” PX 17 at 3. Whose heritage? “Joseph Washington Dant started this tradition way back in 1836 when he felled a poplar tree.” Id. (emphasis added). But J.W. Dant obviously did not start Log Still in 1836; Wally Dant did in 2018. Yet the label proclaims that “[s]even generations later, the Dant family continues to follow in his storied footsteps.” Id . “[O]ur bourbon won’t distill too far from the tree,” the label states, explicitly tying Log Still’s own bourbon to the legacy of J.W. Dant. . And Log Still’s 18-D-36 crest combines an image of a hollow log, an 1836 establishment date, and the first initial of the Dant name—all of which more strongly and accurately connote Heaven Hill’s J.W. Dant label, not Log Still’s Monk’s Road spirits.
18-D-36 Crest (LS Opp. Br. at 11)
These references to J.W. Dant’s name and history may help sell bourbon and
gin, but they add no relevant (or even accurate) descriptive information for
consumers.
See Sazerac
,
Log Still, by contrast, is not using J.W. Dant to describe a factual historical association, or even to emphasize Wally Dant’s own name, but instead to mark its products in a manner that connotes the history of Joseph Washington Dant. Unlike Mr. Hensley, the current Dants lack their own distilling expertise, display limited disclaimers (when they use them at all), [6] and had no roles at Heaven Hill they might need to distinguish. Dant, Tr. I at 277–78; PX 24 at 2–3, 5. And they’re not advertising with their own names, like Jim Hensley did; they’re using J.W. Dant’s name and legacy.
Compare the far more analogous trademark-use holding in Taylor Wine Co. v. Bully Hill Vineyards, Inc. , an alcohol-trademark case that involved Taylors other than the Colonel. 569 F.2d 731, 733–34 (2d Cir. 1978). There the Second Circuit upheld an injunction that barred a vintner from using his own last name and family history to compete with Taylor Wine, a company that bought the winery the defendant’s grandfather started a century earlier. Id . The wine labels said the new winery was founded in 1878, displayed the grandfather’s name (“Walter S. Taylor”), dubbed the grandfather the “Owner of the Taylor Family Estate,” and displayed the grandson’s signature. Id . The Second Circuit acknowledged the newcomer’s own name and expertise, but held he must “take reasonable precautions to prevent [a] mistake” when his family member’s “name has acquired a secondary meaning in the marketplace.” Id . at 734 (quotation omitted). “[T]hat an alleged infringer has previously sold his business with its goodwill to the plaintiff,” in the Court’s view, “makes a sweeping injunction more tolerable.” Id . at 735. The younger Taylor could use his signature to show his association with the brand—so long as he disclaimed any association with Taylor Wine—because he was a known expert in the field. Id . at 736. Connecting his brand to his grandfather’s by using words like “original,” however, could sow confusion and infringe. .
The facts in this case, of course, are nearly identical—even down to the use of
a century’s-old founding date. Except the current Dants have no apparent expertise
in the industry to accurately characterize for consumers. And their bottles display
J.W. Dant’s name, not just their own.
See Bertolli USA, Inc. v. Filippo Bertolli Fine
Foods, Ltd.
,
f. Log Still also uses Dant Crossing in a trademark manner.
The “Dant
Crossing” name Log Still assigned its distillery, concert hall, and tourist destination
presents a closer question. As far as the record reveals, no one has ever called this
location (or any other) by this name, unlike in
Sazerac
,
But its use is also clearly commercial. Log Still has trademarked Dant Crossing and is treating it as a trademark. LS Opp. Br. at 25 (effectively admitting trademark use, but not infringement, regarding Dant Crossing); Dant, Tr. II at 141– 42; U.S. Trademark Application Serial No. 90256626 (filed Oct. 15, 2020). The Dant Crossing and Log Still names are often used to co-brand the distillery, tours, and products. Dant, Tr. II at 141; PXs 38, 40, 44–46. Even the tissue paper and bags in the distillery’s gift shop display Dant Crossing logos. PX 44 at 2. When visitors come to Dant Crossing for a tour or tasting, a storyboard shows a picture of J.W. Dant and claims this “all started with a log still,” which embodies a “legacy” and “tenets the Dants still hold to this very day.” PX 43 at 2. Or visitors hear from their guides about 1836, when “The Dant Family’s Legacy Begins.” PX 42 at 3.
By announcing “[w]e’re back,” PX 42 at 2, Log Still is plainly connecting its
current commercial enterprise at Dant Crossing to the J.W. Dant legacy. And it is
using Dant Crossing to identify numerous products and amenities that Log Still offers
consumers. Even if Log Still used the Dant Crossing name accurately, it would still
be using the name in a trademark way to sell its spirits and attract tourism.
Contra
Sazerac
,
* * *
This is not to say that Heaven Hill has the exclusive right to mention J.W.
Dant. Log Still (like anyone else) could discuss this history in a descriptive manner.
But any such retelling could not advertise spirits. So Log Still may discuss the family
connection between its owners and Joseph Washington Dant. But it may not use the
story of J.W. Dant or Dant Distillery Company to identify or advertise its current
products and venture.
See Denney
,
3. Likelihood of confusion
The remaining question, then, is whether Log Still’s trademark use is likely to create confusion among consumers. As the evidence at this stage shows, it has and likely will. To make that determination, the Sixth Circuit’s Frisch’s test asks the fact-finder to consider 8 factors:
a. strength of the plaintiff's mark;
b. relatedness of the goods;
c. similarity of the marks;
d. evidence of actual confusion;
e. marketing channels used;
f. likely degree of purchaser care;
g. defendant's intent in selecting the mark;
h. likelihood of expansion of the product lines.
Frisch’s Rest., Inc. v. Shoney’s Inc.
,
“These factors are simply a guide,” the Court of Appeals has explained, “to help
determine whether confusion would be likely to result from simultaneous use of the
two contested marks.”
Wynn Oil Co. v. Thomas
,
The parties have implicitly framed this case as a dispute about affiliation:
whether words or marks “erroneously suggest[ ] a connection between the sources”
through which the defendant may “seek[ ] to capitalize on the plaintiff's goodwill and
established reputation.”
Ameritech, Inc. v. Am. Info. Techs. Corp.
,
Heaven Hill’s case, like many plaintiffs’, offers a mixed Frisch’s bag. Its J.W. Dant mark is not terribly strong or similar to Log Still’s, yet Log Still used J.W. Dant’s marks and goodwill repeatedly, expressly, and not necessarily in good faith. Log Still did so to associate its new and growing spirits line with the attractive history of the J.W. Dant brand. Unsurprisingly, this has already caused at least some actual confusion in the marketplace, even among journalists and others who follow the bourbon industry in some detail. The current record leaves no choice but to find that Heaven Hill has proved a likelihood of confusion—and therefore success on the merits.
a. Strength of the plaintiff's mark
A mark’s strength is determined by its “(1) ‘conceptual strength,’ or … inherent
distinctiveness; and (2) ‘commercial strength[,]’ or ‘the marketplace recognition value
of the mark.’”
Progressive Distribution Servs., Inc. v. United Parcel Serv., Inc
., 856
F.3d 416, 428 (6th Cir. 2017) (quoting
Maker’s Mark
,
As to “conceptual strength,” Heaven Hill’s marks are presumptively distinct
(and thus also presumptively strong) because they are “incontestable,”
As to “commercial strength,” however, the Heaven Hill marks fare worse.
Commercial strength “depends on public recognition, or the extent to which people”—
specifically, the relevant market—“associate the mark with the product it
announces.”
Progressive Distrib.
,
The J.W. Dant brand is not commercially strong, rendering the strength of the marks relatively weak. Although the marks have long been used in commerce without evidence of intentional copying (until now, at least), consumer surveys and advertising indicate a lack of widespread recognition among consumers. Log Still’s consumer survey (Heaven Hill didn’t offer one) reveals that only 2.1% of bourbon consumers recognized the J.W. Dant logo mark. DX 59 at 17–19. This is far below other brands such as Jim Beam (92.1%), Wild Turkey (86.6%), Maker’s Mark (82.1%), and other Heaven Hill brands like Evan Williams (59.2%) and Elijah Craig (25.3%). Id . In fact, J.W. Dant was one of the least recognized brands among those Log Still’s expert tested. Id . A survey is not foolproof, of course; this one tested only individual marks outside their usual commercial context. Id . at 3. Viewing the mark on a bottle, as a consumer likely would, could provide more probative evidence of recognition. And an important part of the mark’s goodwill is its history and story, which is not easily measured. Even so, the survey results represent fairly strong evidence that the brand is not commercially strong.
The marketing for J.W. Dant is even more telling. It does not appear on Heaven Hill’s list of 19 bourbons on its website. DX 29. Everyone agrees that Heaven Hill spends little to advertise J.W. Dant, less than $12,000 total over 16 years for all the related J.W. Dant brands. PX 5; Shapira, Tr. I at 156–62; LS Opp. Br. at 23. This is a fraction of the millions Heaven Hill spends on marketing. . And even $100,000 a year, the Sixth Circuit has held in a different context, may not be significant enough to stand out. Burke–Parsons–Bowlby Corp. v. Appalachian Log Homes, Inc. , 871 F.2d 590, 595 (6th Cir. 1989). To be sure, Heaven Hill points to examples of earned media in which journalistic and other outlets discussed the brand in a non-advertising context. PX 6; Lubbers, Tr. I at 196–201. But Heaven Hill offers no evidence about how widespread or valuable such exposure is, and on its face it appears marginal— certainly compared to the attention given Heaven Hill’s Evan Williams and Elijah Craig brands. Suffice it to say this earned media is unlikely to fully compensate for Heaven Hill’s lack of paid advertising to promote the J.W. Dant brand.
The same point applies to the tastings, brand ambassadors, and bottled-in- bond program Heaven Hill uses to promote the Dant brand. Shapira, Tr. I at 78–82. J.W. Dant appears some in these mediums, but not in a widespread or regular way. Shapira, Tr. I at 78–82, 150–53, 163; Lubbers, Tr. I at 192–93, 236. Similarly, J.W. Dant makes an appearance on the Heaven Hill distillery tour, Shapira, Tr. I at 77, but only in one spot in a small corner of the massive campus, PX 4 at 2. It receives somewhat more prominent placement, along with other bottled-in-bond products, at the new visitor’s center that opened in June 2021. PX 4 at 4. But the impact is at best unclear, and highly unlikely to have a quick and earth-shattering effect on J.W. Dant’s market recognition.
Who cares, responds Heaven Hill, our brand is so strong it sells itself to
thousands of loyal customers who “pull” the bottles off the shelf even without any
traditional advertising.
See
above at § II.A(2). What could be a stronger showing of
commercial strength? This theory, however, would only work if J.W. Dant’s sales
were high and consistent—indicating that a large swath of consumers already
recognize the brand. Nothing indicates they do. In 2004 Heaven Hill sold more than
47,000 cases (at 12 bottles per case) of J.W. Dant spirits, including more than 12,000
cases of bourbon. PX 5. This has declined markedly, to some 21,000 cases sold in
2020, including only 3,000 cases of bourbon.
Id.
Guiness, by contrast, sold 25,000
cases of J.W. Dant bourbon before its transaction with Heaven Hill. DN 39-3 at 51
(average sales, 1989–91). Gross revenue for all J.W. Dant brands has dropped from
$2.6 million in 2004 to $1.2 million in 2020. PX 5. Net revenue remains high on a
percentage basis, though the total has decreased with Dant’s falling sales:
approximately $1 million in 2004 compared to $600,000 in 2020. . By comparison,
the Sixth Circuit has held that $2 million in annual gross sales may not be significant.
Burke–Parsons–Bowlby Corp
.,
This focus on national brands is also misguided, Heaven Hill argues; any craft
distillery would love to reach those numbers. This misses the point. Heaven Hill is
not being punished for selling its other bourbons with more success. These numbers
just serve as benchmarks for a successful and well-recognized bourbon brand in the
national market. Given J.W. Dant’s almost nonexistent advertising efforts and
relatively weak sales, at least compared to the national brands Log Still wishes to
compete with, LS Opp. Br. at 36, it is hard to say that J.W. Dant has a well-recognized
place in the market—or a commercially strong mark.
Kibler
,
b. Relatedness of the goods
Relatedness is often assessed according to three categories of functional similarity and consumer competition:
1. “if the parties compete directly by offering their goods or services, confusion is likely if the marks are sufficiently similar;”
2. “if the goods or services are somewhat related but not competitive, the likelihood of confusion will turn on other factors;” and 3. “if the goods or services are totally unrelated, confusion is unlikely.”
Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center
,
But “[j]ust because there is some overlap between the two services, it does not follow that the companies compete directly for the same base of customers.” Progressive Distrib., 856 F.3d at 432 (although both companies were involved in logistics, one served business outsourcing needs at a substantial price, while the other offered free service to smaller customers); see also Therma-Scan , 295 F.3d at 633 (medical technologies distributed indirectly through healthcare professionals did not compete with those sold directly to the public, based on differences in use and marketing). The type of consumers, their use of the good or service, and their location can all affect whether parties are in direct competition. See Champions Golf Club , 78 F.3d at 1118 (even though golf clubs offered identical services, whether they were competitive depended on their locations (in different states) and customer bases (which differed)).
So does Log Still compete with the J.W. Dant brand? Log Still’s marketing firm asked that very question: “competitors – who are they?” PX 24 at 7. Among its answers was the “J.W. Dant brand,” which it feared could lead to “possible confusion.” Id. Log Still worried it “may have to deal with” that issue while “Heaven Hill may see some pickup from that confusion.” Id. Responding to favоrable media regarding the J.W. Dant brand, Wally Dant said he didn’t want Heaven Hill’s demand to increase and noted that he “[w]ish[ed] they’d be more quiet about it.” PX 29 at 1; see also PX 31 at 1. So even Log Still’s leaders recognize a potential connection between demand for its products and J.W. Dant’s. This overlap is unsurprising. Heaven Hill and Log Still produce goods that serve the same basic function for similar consumers: providing a hard liquor for personal consumption, as well as bourbon tourism for consumers seeking a more experiential and historical experience. This direct competition and similar functionality are accentuated, of course, since both parties produce and spotlight bourbon. And both sell bourbon to consumers in liquor stores that overlap geographically. PX 24 at 6–7; PX 48 at 21; Dant, Tr. I at 279.
Log Still resists being lumped in with the bottom-shelf J.W. Dant label.
Because retailers sell its spirits at a higher price point, why should the two brands
be considered in direct competition? In
Maker’s Mark v. Diageo
, after all, the Sixth
Circuit accepted the district court’s conclusion that Maker’s Mark bourbon and
Cuervo tequila were merely “somewhat related” because they shared the spirits
category only in a very broad sense, and were separated by a wide price difference:
Cuervo cost $100 while Maker’s Mark cost $24.
This proximity is also quite relevant to сompetition in the burgeoning bourbon- tourism market. Both companies welcome visitors for tastings and tours to campuses only a few miles apart. Id. at 80–81. The offerings at Dant Crossing, Log Still contends, differ categorically because they include weddings, lodgings, concerts, trails, and more. Heaven Hill offers none of this. But as Heaven Hill notes, varying amenities reflect the competition between distilleries to make their tours distinct and their locations desirable. Many companies—including these two—have focused on their welcome centers to drive revenue not just from tours and gift shops, but also from brand awareness leading to bottle sales. Id. at 72–74.
That Log Still’s own marketing experts consider J.W. Dant a direct competitor
would likely suffice. That’s corroborated, however, by Heaven Hill’s evidence that
both parties sell spirits, particularly bourbon, to the same consumer base in similar
ways at similar locations. True, Log Still is conducting business under the Dant
Crossing, Monk’s Road, and Log Still names, and has no plans to offer a Dant-branded
liquor. And although J.W. Dant appears in Heaven Hill’s visitor center, PX 4 at 2,
its tours don’t emphasize him, LS Opp. Br. at 36–37. Regardless, Log Still’s
counterarguments don’t undermine the reality of the brands’ competition; they just
beg the ultimate question in this case—whether Log Still’s
use
of J.W. Dant in
offering its related products is likely to confuse consumers despite the products’
differing names.
See, e.g.
,
Champions Golf
,
c. Similarity of the marks
Similarity turns on how a regular consumer would actually come across the
marks in the marketplace, whether the consumer could tell the marks apart, and
whether the consumer would think different products were affiliated.
Future Proof
,
Similarity can also account for the relationship between a “house mark” and a
“junior mark.” A house mark is a “product labe[l]” that identifies the manufacturer,
Maker’s Mark
,
Heaven Hill points to four examples of Log Still using J.W. Dant marks or their associated goodwill in a manner similar to Heaven Hill’s use.
1. “The Dant Distillery Company.” In the “Tasting Room at Dant Crossing,” Log Still displays several bourbon barrels stenciled to read “The Dant Distillery Company.” PX 41 at 1–3. The Dant Distillery mark is a common-law mark owned by Heaven Hill that appears on every bottle of J.W. Dant. PX 52 at 29 (bottle 1). Log Still may not freely use that same language as its own.
Log Still argues that the presence of some of its “house marks” would reduce
any confusion.
See Therma–Scan, Inc.
, 295 F.3d at 634. Each barrel’s “bung,” or
stopper, is stamped with one of Log Still’s marks—the 18-D-36 crest. PX 41 at 5. And
consumers might not readily see the Dant Distillery stenciling, given that the barrels
are surrounded by other Log Still house marks in the tasting room. Dant, Tr. II at
124. Yet the close and related combination of Dant Distillery and Log Still marks
could easily create the misimpression of affiliation that the Lanham Act protects
against: seeing Heaven Hill’s Dant marks and Log Still’s house logo together on their
core products—barrels of bourbon in a distillery tasting room. This could certainly
lead a consumer to believe that J.W. Dant is affiliated with Log Still or vice versa.
See Maker’s Mark
,
Dant-Stamped barrel in the Tasting Room at Dant Crossing (PX 41 at 3) 2. Internet and social media. The marketing campaign discussed above (at
§ II.B) also features several J.W. Dant marks or bottles.
See, e.g.,
PX 34 at 7, 11; PX
13 at 4–6, 7–12; Germain Supplemental Report at 2–4. These piсtures include
captions such as “A Family Legacy” or “A Legacy Worth Reviving,” naturally and
intentionally leading consumers to believe that J.W. Dant and Log Still are affiliated.
PX 34 at 7, 11. Log Still also purchased and exploited the jwdant.com domain name,
a direct copying of the J.W. Dant name that would lead people to believe the two were
directly associated. PX 18 at 1–2; PX 30 at 2;
see Audi AG v. D’Amato
,
3. Logos.
Heaven Hill contends the Log Still and J.W. Dant marks used on
their respective bottles are similar enough to cause confusion. The Court is
unconvinced that the designs alone (as opposed to their use in marketing intended to
“subtly t[ie]” the brands, PX 25 at 3) would cause consumers to affiliate the brands,
Kibler
,
Some of these marks do share certain elements—such as a similar cursive script on the primary label:
Log Still and J.W. Dant Script Logos
These marks are the most similar: similar color, similar three-dimensional font, similar cursive, and similar tails trailing the G, L, and T letters. But they differ meaningfully: the Dant logo is tilted with “genuine sour mash” written in black and white inside a curve off the T, while Log Still is followed only by the word “DISTILLERY” in gold block letters. And Log Still and J.W. Dant do not sound or look alike. Absent other suggestive context, a consumer would be unlikely to conclude that the two products were affiliated after confronting these logos—even if positioned side-by-side (which is unlikely in the marketplace).
Log Still 18-D-36 crest and J.W. Dant kernel logo Viewing the circular logos alongside one another leads to the same conclusion.
The 18-D-36 crest and J.W. Dant corn-kernel logos contain no similar words, text, font, or allusions. They are both circular and both contain black, white, and gold— though in an aesthetically dissimilar way. One incorporates a ribbon wrapped around the end of a log, while the other features kernels positioned . Same story for the year 1836 and the letter D: including these harms Log Still’s case, but not because consumers would find these two logos confusingly similar. Otherwise, the ribbon- wrapped log looks nothing like the arranged kernels.
The “Dant Crossing” logo shares only the word Dant with the Heaven Hill logos. Even though the word Dant may be the most prominent feature, the law doesn’t view it in isolation. See Kibler , 843 F.3d at 1076–79. The font and colors differ completely from any Heaven Hill logo, as do the words Crossing and the Gethsemane, Kentucky location. Viewed in their entirety, a consumer is not likely to find any of Log Still’s logos to be similar to the J.W. Dant logos.
4. Bottles.
While some consumers may come across the isolated logos online
or while touring a distillery, the most common place a consumer would confront the
marks is on the companies’ bottles—sitting among numerous others—on retail
shelves.
See Homeowners Group
,
House marks—like the 18-D-36 crest on Monk’s Road—can suggest brands are
affiliated when paired with directly copied or similar junior marks, such as the ones
seen in the social-media posts above.
See Maker’s Mark
,
Monk’s Road and J.W. Dant bourbons (DX 41 and PX bottle 1) Compared to their bourbon cousin discussed above, the gin bottles and their pastoral transparent designs use fewer of the J.W. Dant marks, in a manner far less likely to cause confusion, in connection with a substantially different spirit. Monk’s Road gin (PX 16; DXs 41–42) A final similarity worth noting: all Log Still bottles discuss J.W. Dant’s story on their front or back. They include the 1836 date, which also appears three times on the J.W. Dant bottle, including as part of the logo. And all contain a reрresentation of Wally Dant’s signature that, according to Heaven Hill, resembles a gold J.W. Dant. The story and date are objectionable for the reasons described above, see § III.A(2)(d), and could very well lead a reader to confuse the Monk’s Road and J.W. Dant products as affiliated. Inducing that association appears to be the only point of discussing J.W. Dant on a bottle of Not-J.W.-Dant liquor. But as a matter of visual similarity, the story and date do little to render neighboring marks confusing. The same applies to the Dant signature. True, it reads J.W. Dant. Truer still, Wally Dant’s explanation conflating the Z-shape and the roman numeral III is hard to credit. Dant, Tr. II at 45–46. But that is unlikely to matter much in context. Below the signature is a line that distinguishes Wally from the original J.W.: it reads “J.W. (Wally) Dant III, President/Distiller.” That eliminates any confusion about whose signature appears on the bottle. Only if Heaven Hill points to evidence that this is not, in fact, Wally Dant’s real signature that he claims to have used throughout his adult life would this amount to a case of stolen identity, as opposed to sloppy handwriting.
* * *
In light of all these marks, considered in their consumer context, the record reveals some instances of clear infringement that could heighten the risk of affiliation. The logos and the bottles that consumers would most commonly encounter, however, are dissimilar. The real thrust of this case, in any event, is the affiliation between the history of the J.W. Dant brand and Log Still. On that score, Log Still’s use of the story of Wally Dant’s ancestor is quite probative of similarity. As a result, this important factor points both ways, depending on the marks in question.
d. Evidence of actual confusion
“Evidence of actual confusion is undoubtedly the best evidence of likelihood of
confusion.”
Daddy’s
,
Here we have the “best evidence”—examples of actual confusion in social and traditional media alike. Log Still has existed only since 2018, and has sold its products only since 2021. Dant Tr. I at 260:3–7, Tr. II at 40. Yet numerous consumer and media reactions indicate a misperception that Log Still is either affiliated with or reviving the original J.W. Dant brand.
In response to a Log Still picture that reads “The Dant Family is Back,” commentors asked:
o “is that J W Dant I used to drink”?
o “What about JW Dant is that coming back?” PX 20 at 3. WHAS-11 TV interviewed Wally (whom they introduced as “J.W.”) Dant about the story of Log Still as one of “heritage and revival” of his family’s “legacy,” while showing pictures of a bottle of Heaven Hill’s J.W. Dant product and barrels labeled Dant Distillery. PX 11 at 1. [10] o The story didn’t mention Heaven Hill and only briefly noted that the Dants sold the family business in the 1940s.
o Instead, Wally referred to Log Still’s recipes as an homage to J.W. Dant’s recipe, while pictures of J.W. Dant and his branded bourbon appeared on screen. Id. WHAS-11 TV pictures of J.W. Dant and his trademarks
during Wally Dant interview
The Distillery Trail Blog, an industry-focused website, ran a story on the new distillery carrying the headline “Log Still (formerly J.W. Dant).” PX 15 at 1. [11]
Google searches for “J.W. Dant” and its variants (“J.W. Dant bourbon distillery,” “where is JW Dant distillery?”, etc.) regularly return results for Log Still Distillery. PX 21 at 1; Lubbers, Tr. I at 203–8 (corroborated by the Court’s own searches during the hearing).
A Log Still tourist posted online photos of the distillery (including a picture of the J.W. Dant storyboard) after “[s]pen[ding] the afternoon at Log Still Distillery!”, which he described as “[t]he original J.W. Dant distillery!” PX 20 at 1: Log Still raises two arguments in hopes of undermining this showing, but neither rebuts the evidence that at least some consumers, and undoubtedly others who visited Dant Crossing or viewed traditional and social media, have already been confused by Log Still’s apparent affiliation with J.W. Dant.
First
, in the short time Log Still has offered its product, the record reveals no
single customer who purchased one brand under the misimpression that it was
affiliated with or owned by the other. LS Opp. Br. at 41–42; Shapira, Tr. I at 180–
82; Lubbers, Tr. I at 253. Such purchasing confusion would amount to “serious
confusion of actual customers,” entitled to greater weight than confused inquiries or
searches.
See Kibler
,
But Log Still has only had actual customers for a couple months. And consumers of Log Still’s tourist offerings have already expressed confusion that this distillery produces J.W. Dant bourbon. These online posts, while perhaps not as important as bottle purchases, represent Log Still’s primary advertising channel. PX 48 at 22 ($467,200 in social-media expenditures). That the posts created such early this evidence somewhat, but it still usefully reflects the way many contemporary consumers would interact with either brand.
confusion represents meaningful evidence of actual confusion.
See Maker’s Mark
, 679
F.3d at 422. Moreover, evidence of actual confusion does not have to come from a
consumer; it can come from a producer, retailer, or the general public.
See Champions
Golf Club
,
Ironically, Log Still’s own marketing team supplies further corroboration. It
identified Heaven Hill’s J.W. Dant label as a competitor of Log Still’s Monk’s Road
label and raised worries about purchaser confusion well before this litigation: “we
may have to deal with possible confusion there. Heaven Hill may see some pickup
from that confusion.” PX 24 at 7. Through emails and marketing strategies, Log Still
has expressed worry that media coverage of J.W. Dant and its own activities could
increase demand for J.W. Dant, a natural consequence of confusion regarding the
products’ origin and affiliation.
See
PX 24 at 7; PX 29 at 1,4; PX 31 at 1; PX 32 at 1;
Champions Golf Club
,
Second , Log Still notes that its expert showed consumers an array of bourbon bottles and found that only 5% of study respondents expressed confusion regarding the Dant and Monk’s Road bottles. Nowlis Expert Report (DX 58) ¶ 64. Such a low level is generally considered evidence that “confusion is not likely.” 6 M C C ARTHY § 32:189 (reviewing cases). [12] But that merely confirms what the evidence above revealed about the limited similarity of the bottles themselves. [13] At the end of the day, this is not a case about bottle comparisons; it’s a dispute about who controls the J.W. Dant tale in the spirits market. On that salient point, Heaven Hill has presented strong early evidence of actual confusion.
e. Marketing channels used
This factor turns on “how and to whom the respective goods or services of the
parties are sold.”
Progressive Distrib.
,
With respect to online marketing specifically, courts ask whether “the parties
use the internet as a substantial marketing channel.”
Kibler
,
Moreover, both parties target the same cоnsumers for bourbon tourism. The Kentucky Bourbon Trail, a major tourism driver, already features Heaven Hill as a stop. Now its sister route—the Kentucky Bourbon Trail Craft Tour—will feature Log Still Distillery. Shapira, Tr. I at 75 (recent approval of Log Still); Dant, Tr. II at 77– 78; PX 53 at 1. The distilleries are within 10 or 12 miles of each other. Shapira, Tr. I at 80–81. Both have public road signs directing travelers in the area. PX 38 at 1. To be sure, a similar physical presence, like a similar online presence, does not necessarily guarantee consumer confusion. But the evidence of similarity seen here certainly raises the risk, particularly when accompanied by context and marketing suggesting a false connection between these products.
On balance, this factor favors Heaven Hill. Both distilleries use similar marketing channels to target basically the same set of consumers, though Heaven Hill’s limited advertising of J.W. Dant reduces the weight this factor carries.
f. Likely degree of purchaser care
This factor considers whether the “typical buyer exercising ordinary caution,”
Homeowners Group
, 931 F.2d at 1111, “would differentiate between products with
similar trademarks,”
Therma-Scan
,
This factor is basically a wash. Bourbon buyers span the sophistication
spectrum.
See
Shapira, Tr. I at 125–26; Lubbers, Tr. I at 215–16. While
“knowledgeable bourbon customers” purchasing expensive spirits would likely
exercise great care,
Maker’s Mark
, 679 F.3d at 423, “the average American who
drinks … on occasion can hardly pass for a connoisseur” and “remains an easy mark
for an infringer,”
Taylor Wine
, 569 F.2d at 733–34. Although the price difference
between Monk’s Road’s most expensive offerings and J.W. Dant is significant, the gap
is narrower than the $76 difference in
Maker’s Mark
,
In any event, this is a case about affiliation, not palming off. The initial
examples of customer and media confusion suggest that even sophisticated
consumers could be confused regarding who makes which bourbon.
See Therma-
Scan
,
g. Defendant's intent in selecting the mark
“If a party chooses a mark with the intent of causing confusion, that fact alone
may be sufficient to justify an inference of confusing similarity.”
Homeowners Group
,
“Direct evidence of intentional copying is not necessary to prove intent,” id . at 286, while circumstantial evidence can arise from the “use of a contested mark with knowledge of the protected mark at issue.” . But prior knowledge is probative, rather than dispositive, because a user can in good faith believe it is not infringing. Progressive Distrib. , 856 F.3d at 436 (“[K]nowledge of a trademark, alone, will not support a finding of intent to confuse if other circumstances show that the defendant believed there was no infringement.”).
Log Still knew Heaven Hill owned the J.W. Dant brand. That’s why Wally Dant tried to buy it at the outset. Shapira, Tr. I at 98–101; Dant, Tr. I at 265, 280, Tr. II at 115, 120; PX 7 at 1. Even when Log Still realized it was unlikely to get the brand, it still wanted a name “related to the history of the family” and chose “Log Still” to fulfill that goal. PX 24 at 2. It did so despite awareness that some of its actions could raise legal concerns on the part of Heaven Hill. Id. at 7; PX 26 at 1–2. Wally Dant told a journalist that he hoped Heaven Hill would sell the brand because “we could do better with it.” PX 35 at 2. He was proud of J.W. Dant and wanted to revive the “Dant legacy.” PX 37 at 2. In fact, one of the main “threats” the marketing team identified was “Legal challenges-J.W. Dant brand/Heaven Hill.” PX 24 at 9. Log Still was correct, as Heaven Hill sent three cease-and-desist letters regarding potentially infringing actions. PX 8 at 12, 13. In addition, Heaven Hill challenged Log Still’s attempts to trademark “Dant & Head” before the Trademark Trial and Appeal Board. PX 9 at 4–9. This caused Log Still to abandon the petition and the Board to enter judgment against Log Still, refuse the registration, and sustain Heaven Hill’s opposition. Id. at 41. So at the very least, Log Still knew about the J.W. Dant trademarks and the potential that its business plan could raise trademark concerns.
What happened next, in Log Still’s view, shows its good-faith efforts to follow
the law and respect the Dant marks: it complied with the cease-and-desist letters and
retracted the trademark application. The critical question under trademark law is
not whether the junior user tried to limit legal liability, however, but whether it chose
its marks and marketing with the intent to cause confusion and exploit the senior
owner’s goodwill.
See Homeowners Group
,
Once again, the answer provided by Log Still’s marketing experts is telling: We feel the native Dant Family brand story of the log still creates a perfectly positioned name for building brand equity in the family history & subtly tying the new distillery to the J.W. Dant name. This name creates direct ties to the J.W. Dant name whether the brand can be used or not and it creates an opportunity of strong brand imagery for the master brand.
Master Brand Name Recommendation (PX 25 at 3) (emphasis added).
This is descriptively accurate and legally damning. The “native Dant Family brand story” refers to the preexisting J.W. Dant brand and its associated goodwill— both owned by Heaven Hill. The “brand equity” Log Still set out to build rested on Joseph Washington Dant’s family history far more than on that of Wally Dant and his cousins—even if some overlap exists. By referring repeatedly to the “J.W. Dant name” and story, Log Still is “creat[ing] direct ties to” a mark owned by Heaven Hill. Deciding to proceed with this plan “whether the brand can be used or not” indicates that Log Still knew its trademark risk, but decided to proceed with this “Master Brand Name Recommendation” regardless, executing the plan proposed by the marketers even though it lacked a license or permission from Heaven Hill. See § II.B, III.A(2)(d) above. Direct evidence of intent, as trial judges regularly instruct juries, is hard to come by. See generally Sixth Circuit Pattern Jury Instruction § 2.08 (2) Inferring Required Mental State (“Ordinarily, there is no way that a defendant's statе of mind can be proved directly” so it “can be proved indirectly” by circumstantial evidence). Yet the Log Still marketing plan is about as close as many lawyers will ever come to a smoking gun.
But wait, there’s more! During the branding process, Log Still brazenly used J.W. Dant marks as reference points in the design of its own marks. The person who designed the Log Still logo “tried to incorporate gold” so that the “font was an 85% match to the JW Dant one.” PX 22 at 1. The “discovery workshop” for the Log Still brand recommended that the new logo’s colors “mirror the original J.W. Dant label colors” by “[s]ticking with tradition without copying exactly.” PX 24 at 10. For the Monk’s Road label, “the script font that is used is the J.W. Dant script from the original label.” Id. The marketing team discussed using the D for Dant in the 18-D- 36 logo as “conceptually” related to the J.W. Dant “trademark symbol with the corn kernels,” which “Wally likes.” Id. ; PX 26 at 2. Wally Dant also wanted to use Joseph Washington Dant on the labels “so that way no one could accuse of [ sic ] us…” PX 28 at 2 (ellipsis in original). But then he specifically asked that the “J the W and the Dant” be highlighted gold—apparently to make “Joseph Washington Dant” more closely resemble the original brand. Id.
Granted, Log Still did not ultimately adopt all these design ideas. But the
discussion and design efforts show, plain as day, that Log Still tried to mirror classic
J.W. Dant marks while avoiding the legal consequences of copying. Was this done
with pure intentions, as Log Still contends? LS Opp. Br. at 49–51. The Sixth Circuit
has held that “intentional copying” exists if “the alleged infringer [Log Still], who has
at least as much knowledge as the trier of fact regarding the likelihood of confusion,
believes that [its] copying may divert some business from the senior user [Heaven
Hill].”
Daddy’s
,
The record includes still more reasons to doubt Log Still’s pure intentions. The purposeful purchase and redirection of jwdant.com, for more than a year, to Log Still’s own website. See § II.B above. Res ipsa loquitur .
Wally Dant’s incredible claim that the J.W. Dant in the URL referred to him, Dant, Tr. II at 136, even though the emails at issue expressly referred to Joseph Washington Dant, PX 30 at 3.
Log Still knew that using “est. 1836” “might” raise concerns since Heaven Hill used that for J.W. Dant, PX 26 at 1, yet decided to put “EST. 1836” on its gin bottles and inside its prominent 18-D-36 logo.
Log Still also knew that its use of the 1836 date was inaсcurate, which is why one of its proposed taglines mentioned “putting barrels in bottles since 1836. Sorta .” PX 27 at 45 (emphasis added).
The entire marketing plan rested on tying Log Still to the legacy of J.W. Dant by “reviving” or giving “rebirth” to a “legacy,” “tradition,” or “heritage”—always in reference to the old J.W. Dant history. See PX 24 at 2, 5; PX 27 at 7, 11, 17; PX 32 at 6–8, 10–11; PX 48 at 2–4; Earnhart, Tr. I at 171–73 (importance of this story).
The marketing team listed J.W. Dant, his bourbon, and his history as topics over which Log Still had the “authority” to address with credibility and expertise, indicating Log Still maintained its venture had wide latitude to discuss J.W. Dant. PX 27 at 17.
Log Still’s social media posts, website, and even bottles included pictures of J.W. Dant logos or bottles and lines such as “A Legacy Worth Reviving.” PX 13 at 7–13; PXs 16, 33, 34. Log Still knew that Heaven Hill controlled this intellectual property, but used the images anyway in order to affiliate its new brand with Heaven Hill’s existing one.
To bring more attention to “the Dant family’s revival,” Log Still tried to gather more “Dant photographs,” while cautioning that “we want to be sure that pictures do not overly promote J.W. Dant/Heaven Hill.” PX 32 at 1.
Log Still’s marketing team knew that confusion was a risk before launch: “we may have to deal with possible confusion there. Heaven Hill may see some pickup from that confusion.” PX 24 at 7.
Emails and marketing plans expressed concern that media discussion of J.W. Dant (the historical figure) in connection with Log Still’s launch could increase demand for J.W. Dant (the Heaven Hill brand), which would naturally follow from confusion regarding the products’ origin and affiliation. PX 24 at 7; PX 29 at 1; PX 30 at 1–2; PX 31 at 1; PX 32 at 1.
Despite these concerns regarding confusion, Log Still proceeded to execute its
Dant-themed marketing plan. This supplies abundant and strong evidence of intent.
Other courts have found bad intent based on similar, but more limited, records.
See,
e.g.
,
Audi AG
, 469 F.3d at 543–45 (using www.audisport.com was evidence of bad
intent because the owner knew he did not own the Audi brand);
Grubbs v. Sheakley
Group
,
Wally Dant attempted to put at least some of this behavior in a better light by reiterating that J.W. Dant was, after all, his own name: John Wallace Dant III. Dant, Tr. II at 136. As discussed above, this is largely irrelevant as a question of basic trademark law: the question is confusion, not literalism. See above at § III.A(2)(b). As a factual matter, too, that explanation of Log Still’s intent is tough to credit. A great deal of evidence shows that Log Still often used J.W. Dant to refer to Joseph Washington the First, not John Wallace the Third. When Lynne Dant—the head distiller—asked to use Joseph Washington instead of J.W. in a Facebook post, she wasn’t thinking about her cousin. PX 30. Nor with respect to the domain name: “speaking of our ol’ great-great J.W…. I believe we now own the URL JWDant.com…since we keep mentioning the name, can we go ahead and map that URL to logstilldistillery.com?” Id. at 3. Wally Dant was on this email thread and never indicated that his cousin didn’t realize that J.W. actually referred to him. . This and other context clues cast serious doubt on Log Still’s assertions of good faith. See, e.g. , § III.A(2)(d) (gold lettering of J, W, and Dant on label). This only strengthens the remaining evidence that Log Still intended to affiliate itself with J.W. Dant’s goodwill to promote its own products.
h. Likelihood of expansion of the product lines
“[A] ‘strong possibility’ that either party will expand his business to compete
with the other or be marketed to the same consumers will weigh in favor of finding
that the present use is infringing.”
Homeowners Group
, 931 F.2d at 1112 (citing
Restatement of Torts § 731(b) & cmt. c (1938)). An “expansion” may be either
geographic or an increase in the types of products or services offered.
See id
.;
Daddy’s
,
109 F.3d at 287–88. This is relevant if the parties are not already competitive,
Homeowners Group
,
Regardless, expansion is rather obvious here, as both parties seem to recognize. Dant, Tr. I at 279–80, Tr. II at 82–83. Log Still’s business plan is to grow its brand recognition and market presence, both by selling the bourbon Log Still distills itself, Dant, Tr. I at 279–80, Tr. II at 45 (the current product is sourced, not homegrown, as is common for new distillers), and by expanding geographically, including to many states where J.W. Dant is sold, id .; PX 24 at 6–8; PX 48 at 21. Monk’s Road growth is already impressive, and nothing indicates it is likely to slow. Dant, Tr. II at 82–83, 116–18. Log Still also hopes to become a bourbon destination, bringing more tourists into a campus only a few miles from Heaven Hill’s. PX 24 at 6–8; PX 48 at 21 ; PX 53 at 1. While Heaven Hill might not expand the J.W. Dant label in particular, the bourbon boom will likely cause some growth, especially in tourism. Shapira, Tr. I at 72, 94–95. Both parties, for example, will open restaurants for tourists. LS Opp. Br. at 36. Because they are competing over bourbon in an expanding market, this factor strongly favors Heaven Hill.
* * *
Considering all eight factors, the evidence presented in the parties’ submissions and at the preliminary-injunction hearing shows a strong likelihood of confusion.
This is an affiliation case in which a newcomer is building a brand by
intentionally tying itself to an old brand and story controlled by a competitor. So Log
Still’s conception and execution of this plan to trade on another’s good will—by “subtly
tying the new distillery to the J.W. Dant name” through labels, distillery tours, social
media, and the like—might by itself support a likelihood of confusion. PX 25;
Homeowners Group
,
But intent is hardly the only factor that favors Heaven Hill. Even though Log Still has just opened, evidence shows confusion among consumers and members of the media that Log Still is the “original J.W. Dant distillery!” PX 21; Daddy’s , 109 F.3d at 284 (actual confusion is “the best evidence of likelihood of confusion.”). This indicates that Log Still’s marketing plan has already had the desired effect of tying the brands’ “stories.” That is especially problematic given that Log Still and the J.W. Dant brand are related—competing for the same consumer base. So Heaven Hill is losing control of its brand among its target audience. And this will only get worse as Log Still expands in geographical reach and production. In addition, even though J.W. Dant is not heavily advertised, both parties use the same channels of distribution and similar marketing efforts to reach bourbon aficionados and other liquor consumers. These factors all weigh heavily in favor of Heaven Hill and are more than enough to conclude that Log Still’s actions are likely to cause confusion.
The most significant factor in Log Still’s favor is the relatively poor strength of J.W. Dant’s marks, based on market-recognition evidence. And the logos and bottles are unlikely to confuse a consumer in a store based on any visual similarities. But similarity matters less in an affiliation case, Maker’s Mark , 679 F.3d at 421–22, particularly when the junior user set out to affiliate its product with an existing brand’s goodwill. So only two factors favor Log Still—and those only moderately.
The last factor, purchaser care, washes out for similar reasons: the relevant
consumers span the spectrum of care, and even very sophisticated consumers may be
confused by a potential association between similar products.
See, e.g.
,
Champions
Golf
,
Because most of the factors—including some of the most important, such as intent and actual confusion—heavily favor Heaven Hill, the Court finds that Log Still’s conduct is likely to cause confusion and therefore that Heaven Hill is likely to succeed on the merits.
B. Irreparable harm
When an infringer uses a mark it doesn’t own, it “borrows the owner’s
rеputation, whose quality no longer lies within his own control.” 4 M C C ARTHY § 24:14
(citing
Yale Elec. Corp. v. Robertson
,
And this sort of injury is usually considered irreparable. Just last year
Congress updated the Lanham Act to provide a “rebuttable presumption of
irreparable harm upon … a finding of likelihood of success on the merits for a
violation identified in this subsection in the case of a motion for a preliminary
injunction or temporary restraining order.”
Since Heaven Hill is likely to succeed on the merits,
Log Still argues that testimony from Heaven Hill’s president and brand
ambassador rebuts this presumption. Both admitted they do not know of any
instances of lost sales or consumer confusion other than the online posts discussed
above. Shapira, Tr. I at 180–81; Lubbers, Tr. I at 253. Heaven Hill’s president
admitted on the stand that the company “hasn’t been irreparably harmed at this
point.” Shapira, Tr. I at 181:25–182:1–2. But in context, this answer came after
questions dealing with lost sales and consumers voicing confusion.
Id.
at 180–82 .
Even assuming this amounted to a concession, however, that would not be dispositive
in an infringement case.
See Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc.
,
453 F.3d 377, 381–82 (6th Cir. 2006) (not requiring a particular finding of the
likelihood of irreparable harm because harm to reputation follows from likely
confusion). In
Wynn II
, the Sixth Circuit followed the “proper approach” of “looking
to the entire record rather than focusing on the concession.” 943 F.2d at 603
(declining to accept concession regarding intent without further examination). It is
unsurprising that evidence of tangible direct harm has not surfaced since Log Still
just recently opened to the public.
See Maker’s Mark
,
In any event, Heaven Hill does not need proof of lost sales to show irreparable
harm; losing control over the brand and reputation of J.W. Dant can be enough if that
loss is ongoing or imminent.
CFE Racing Prod.
, 793 F.3d at 596;
Sumner County
Schools
,
Log Still raises two equitable defenses to argue that it has rebutted the presumption of irreparable harm. Neither is persuasive based on the preliminary- injunction record.
First , in a type of laches argument, Log Still argues that Heaven Hill’s delay in bringing this case and allowing time to conduct discovery shows a lack of irreparable harm. According to Log Still, its activities have been open and compliant with Heaven Hill’s objections, leaving Heaven Hill no rеason to wait to file this suit while Log Still continued to invest millions. See LS Opp. Br. at 53.
While Log Still may have operated in the open, it did so only since its 2018
establishment and its 2021 public launch. Heaven Hill didn’t sit on its hands during
that period; it warned Log Still not to infringe on its marks, sent several cease-and-
desist letters, and successfully challenged Log Still’s attempt to trademark Dant &
Head. PXs 8, 9, 12, 13. Equity doesn’t demand that Heaven Hill lead with its high
trump. And the Court won’t punish Heaven Hill for opening with an approach less
drastic than an expedited federal-court injunction before Log Still began to execute
(or even develop) its marketing plan.
See Wynn II,
Second
, Log Still argues these claims are estopped because Heaven Hill itself
uses the Beam name without permission and allows Limestone Distillery to discuss
J.W. Dant. LS Opp. Br. at 27, 52; Tr. I at 34:6–15, 129–137, 177–78; DX 30–36. But
Log Still points to nothing in which Heaven Hill or Limestone purports to “revive”
the Beam or Dant legacy; neither example approaches the level of intentional
association and commingling evident in this record. Instead the information cited by
Log Still merely discuss the historical reality that several members of the Beam
family worked for Heaven Hill as master distillers, Shapira, Tr. I at 129–37; DX 33–
34, 63, and that J.W. Dant played a role in the bourbon industry that led to Limestone
Distillery’s creation, DX 35. This is precisely the type of non-trademark use discussed
in
Hensley
,
Based on this evidence of loss of control, Heaven Hill retains and even strengthens the presumption of irreparable harm that law affords an owner whose marks have been infringed.
C. Public interest
Trademark law is by its nature focused on the public’s interest in ensuring that
consumers know what they are purchasing and can make informed decisions.
See
1
M C C ARTHY § 2:22. “An important beneficiary of the trademark system is the public,”
which “has a great interest in administration of the trademark law in a manner that
protects against confusion.”
Guthrie Healthcare System v. ContextMedia, Inc.
, 826
F.3d 27, 50 (2d Cir. 2016). A violation “inhibits competition,” but also “deprives
consumers of their ability to distinguish among the goods of competing
manufacturers.”
Inwood Laboratories, Inc. v. Ives Laboratories, Inc.
,
The evidence of actual consumer confusion already in the record substantiates that concern in this case. See above at § III.A(3)(d). And that evidence suggests the risk of confusion will only increase as Log Still grows. The purchasing public has a clear interest in not being confused or led astray.
Log Still’s only response is that an injunction would hurt competition without
any corresponding benefit because it doubts Heaven Hill is likely to succeed on the
merits. Obviously this Order rejects that premise. And even assuming that requiring
Log Still to alter its marketing equates to a diminution in competition, the goal of
trademark law is not unfettered competition; it is non-misleading and non-
confiscatory competition.
See Johnson v. Jones
,
D. Substantial harm to others
“Where the burden of the injunction would weigh as heavily on the defendant
as on the plaintiff, the plaintiff must make a showing of at least a ‘strong probability
of success on the merits’ before a trial court would be justified in issuing the order.”
Frisch’s
,
“A party who willfully proceeds to expend funds on infringing activities cannot
claim the loss of those funds as a ground for denying preliminary injunctive relief.”
Worthington Foods, Inc. v. Kellogg Co.
,
But much of this is self-inflicted, or at least knowingly risked. Log Still invested a tremendous amount of money, time, and effort into an impressive enterprise. But it did so without assurances regarding the limits of trademark law and Heaven Hill’s patience. And, as far as the record reveals, it did so without a contingency plan.
To be sure, Log Still certainly has a product and story of its own to sell, as well
as a claim—albeit limited by law—to the Dant family’s history and honor. But equity
accounts for those considerations in shaping the remedy, not by denying an injunction
in the first place.
See Basile
,
IV. Remedy
The temporary injunctive relief available to Heaven Hill stems from the
Lanham Act and
As discussed above, courts take special care in crafting injunctions that “serv[e]
to limit an individual’s use of his own name in a business that he has nurtured.”
Joseph Scott Co. v. Scott Swimming Pools, Inc.
,
Mindful of those competing considerations, therefore, the Court GRANTS IN PART Heaven Hill’s motion for a preliminary injunction and ORDERS Log Still to stop using the goodwill associated with the J.W. Dant brand to promote its spirits and services by taking these steps:
A. Products, labels, and logos
1. Log Still must remove references to J.W. Dant and his story from its products, labels, and logos. See, e.g., K. Taylor ,31 F. Supp. at 614–16.
2. Log Still must remove references to the year 1836 from its products, labels, and logos since its use implies an ahistorical connection to the J.W. Dant brand. See vonRosenberg ,429 F. Supp. 3d at 182–85.
3. Log Still needn’t destroy, recall, or relabel existing products that it has already labeled or branded due to Heaven Hill’s agreement, Tr. II at 214–18, and the cost and complications involved. The relabeling required by this Order will apply prospectively to any new bottle produced by Log Still.
4. The parties shall confer and update the Court regarding a timeline for rebranding, specifically addressing the timing and process for any federal label approval, see Tr. II. at 148–49, 156–57, as well as the amount and nature of the infringing products and services that will remain on offer.
B. Marketing
1. Log Still may not use the jwdant.com domain in connection with any
aspect of the spirits industry.
See generally Audi
,
2. Log Still must remove any social media, web, advertisement, or other
marketing or communications content that promotes its spirits by
of signature and personal story adjacent to disclaimer);
Hustler
,
3. Log Still needn’t eliminate all references to the history of J.W. Dant and the current Dants’ familial connections with him on their tours, website, social media, or campus. But such references must include a conspicuous disclaimer that Log Still does not own and is not affiliated with the J.W. Dant brand, which previous generations sold and is now owned by an unaffiliated company. See, e.g., L.E. Waterman Co. , 235 U.S. at 96; Taylor Wine ,569 F.2d at 736 .
4. Log Still must use Joseph Washington Dant’s full name, as opposed to J.W. Dant, when discussing his story, company, or legacy. Id .
5. Log Still and members of the Dant family involved in Log Still may refer to the current family members’ involvement in the new venture as long as they don’t use the initials J.W. out of context and explain their names and associations in an accurate and non-misleading manner. .
C. Dant Crossing
1. Log Still may continue to refer to its campus as Dant Crossing, given the property’s historical ties to the Dant family and the term’s descriptive nature. But Log Still may not take steps to further affiliate the campus name with the marketing and offering of the spirits distilled there under different brand names. See Sazerac Brands , 892 F.3d at 857. To the extent the Dant Crossing name is used in connection with the original J.W. Dant and the marketing of spirits, Log Still must use a disclaimer.
2. Log Still must remove the Dant Distillery Company stencils from the barrels and refrain from using that common-law trademark in other commercial ways.
D. Bond
1. The parties must confer regarding a potential bond amount from Heaven Hill, consistent withFed. R. Civ. P. 65(c) , and submit their joint or (if necessary) respective positions within 10 days of the entry of this Order.
cc: Counsel of Record
December 16, 2021
Notes
[1] This section sets forth factual findings, based on the briefing and hearing, consistent with
[2] Three such squabbles are worth noting:
First
, J.W.’s grandson—William Dant—opened Dant & Head Distillery on the current
site of Dant Crossing. PX 24; Dant, Tr. I at 276; Dant, Tr. II at 110, 152. The Dant Distillery
Company, led by William’s uncle George, successfully sued Dant & Head for infringing on
J.W. Dant’s trademarks.
Second
, another son of J.W.—John P. Dant—started The John P. Dant Distillery
Company, which produced Old Ballard and Old Danton bourbons and did business with The
Dant Distillery.
John P. Dant Distillery
,
[3] Log Still moved to exclude Heaven Hill’s expert Kenneth Germain because he only offered legal opinions. DN 30 at 2. During a brief hearing regarding the logistics of the preliminary- injunction hearing, DN 50, the Court denied Log Still’s motion to exclude Germain’s expert reports (DN 30-6 and -7), with the understanding that the Court would only rely on their factual testimony, not any legal opinions they discussed. See also Tr. II at 4.
[4] The Lanham Act codifies a similar doctrine for descriptive uses—but casts it as the
affirmative defense of “fair use.”
[5] Unlike the label shown here, the label eventually used on Monk’s Road bottles sold to the public did not highlight the J, W, and Dant in the manner seen in this exhibit. This label reflects an earlier version used by the marketing department. But the text remained the same.
[6] The record reflects a disclaimer from Log Still’s website (but not its bottles, distillery, or advertising) stating that “Log Still Distillery does not own the J.W. Dant bourbon brand and has no affiliation with the brand or its current owner.” But the text was so small that Wally Dant and Max Shapira both struggled to read it as presented at the hearing. Dant, Tr. II at 153; Shapira, Tr. I at 116. Log Still also points to a handful of Twitter and Instagram posts that promoted the quality of its bourbon using photos of J.W. Dant-branded bottles accompanied by the same disclaimer. DN 37-17 at 9–14.
[7] The Lanham Act prohibits using words or marks in ways that are “likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another person.”
[8] In the alternative, and regardless of incontestability, J.W. Dant could be considered
distinctive because full names are registrable and thus distinctive, even without a showing
of secondary meaning. The Lanham Act excludes from registration words, like Davis or
perhaps Dant, that are “primarily merely a surname.”
[9] See Travis Gillmore, The Best Selling American Whiskey Brands in the World for 2021 , V INE P AIR , July 6, 2021, https://vinepair.com/booze-news/best-selling-american-whiskey- brands-2021/.
[10] The video remains available online. WHAS-11, Great Day Live: Log Still Distillery on Great Day Live! , Y OU T UBE (Oct. 16, 2020), https://www.youtube.com/watch?v=nObsqOeAygs (posted on Oct 16, 2020).
[11] This article from the Distillery Trail blog is no longer available online. But the headline remains probative of industry confusion at the time and in the future. PX 15 at 1; Tr. I at 111–13 (acknowledging the saved blog post is authentic and probative, albeit incomplete). Some of the consuming public, of course, may have read this and become confused before the blog removed it. The same goes for the Google searches: the context may reduce the value of
[12]
See, e.g.
,
James Burrough, Ltd. v. Sign of Beefeater, Inc.
,
[13] Heaven Hill’s rebuttal expert Hal Poret offered a report poking holes in the Nowlis study regarding the way in which respondents viewed the bottles. DN 45-35. But any impact of the expert’s design choices is likely immaterial, and certainly overshadowed by the limited salience of the bottle-to-bottle comparison.
[14]
See, e.g.
,
Waterman
,