How Many “Jacks” Can Co-Exist in the World of Alcohol? Trademark Complainant Wants to Know

Mark Anthony International, SRL recently filed a lawsuit against Jack Daniel's Properties, Inc. (JDPI), seeking a declaratory judgment that it has the right to sell a margarita-flavored malt beverage under the trademark Cayman Jack and to register the trademark with the USPTO. The lawsuit was filed after JDPI opposed Mark Anthony's trademark application and threatened Mark Anthony with an infringement lawsuit.

What's interesting about the complaint is Mark Anthony's assertion that JDPI presumes to have sole ownership of the word "Jack" in connection with the sale of any alcoholic beverage. That proposition, Mark Anthony alleges, is untrue because JDPI has tolerated and expressly consented to numerous other alcoholic products sold using the word "Jack" in their names.

As stated in the complaint:

The [trademark] application was examined by the United States Patent and Trademark Office ("USPTO") and found to be entitled to registration and published in the Official Gazette on March 9, 2010.

The fact that the USPTO believed CAYMAN JACK to be entitled to registration is wholly unsurprising given the prevalence of other "Jack" named drinks in the marketplace. The JACK DANIEL'S mark already coexists with other "Jack" named alcoholic beverages, including PANAMA JACK and CALICO JACK for rums; CACTUS JACK for tequila; PAPA JAC for alcoholic cocktails; YUKON JACK for liqueur; SCRUMPY JACK for cider; DEADEYE JACK, THIRSTY JACK, BLACK JACK STOUT, JACK RABBIT PALE ALE and JACK'S PUMPKIN SPICE ALE for malt beverages; HONEYJACK for mead and hydromel; and BLACKJACK PASTURE, JUMPIN JACK and BLACKJACK WINES for wines.

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A review of the marketplace suggests that JDPI continues to tolerate various marks containing the word JACK for rum drinks as White Rock continues to offer these products [Calico Jack and Spiced Jack No. 94] for sale. Moreover, the CALICO JACK mark is still registered in the USPTO (U.S. Registration Number 3,501,111).

(citations omitted) 

Related item:

What Do Jack & Coke and Trademark Infringement Have in Common? They Both Lead to Actual Confusion: Jack Daniel's Sues Jakk'd Beverages

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