KY Distiller to Bob Dylan whiskey co.: Hands off the trademark

With more than 1.4 million barrels of aging bourbon whiskey in reserve, Heaven Hill Distilleries may not cry over a spilled shot glass or two, but it will fight to defend its trademark.

The Kentucky distiller has filed an infringement lawsuit against a Chicago-based company that makes a collection of American whiskeys co-created by musical legend Bob Dylan. The complaint accuses Heaven’s Door Spirits, LLC, of willfully trading on the HEAVEN HILL mark to confuse consumers and divert sales from Heaven Hill’s whiskeys.

Heaven Hill is asking the Western Kentucky District Court to stop the defendant from producing and selling its whiskeys bearing the HEAVEN’S DOOR mark, destroy all packaging and promotional materials and abandon its applications to register HEAVEN’s DOOR mark. In addition, the distiller wants all the profits Heaven’s Door realized from its “wrongful acts” plus punitive and exemplary damages.

Based in Bardstown, Kentucky, Heaven Hill was founded in the 1930s, just after Prohibition ended, by the Shapira family, according to the complaint. It has registered its mark and brands as far back as the late 1930s and over the last five years has spent more than $7.5 million on marketing and advertising distilled spirits and whiskeys under the Heaven Hill umbrella.

Moreover, it has guarded its trademark. In the court filing, the distiller claimed it has “scrupulously and successfully enforced and protects its HEAVEN HILL Mark against past infringements, through cease-and-desist letters, domain name enforcement actions, and litigation.”

Heaven Hill first noticed Heaven’s Door in August 2017 when the newcomer filed an application to register its mark with the U.S. Patent and Trademark Office. After Heaven Hill discovered certificates of label approval which indicated Heaven’s Door was launching a series of American whiskey products, the Kentucky distiller wrote a cease-and-desist letter.

Heaven’s Door advised it would not be changing its mark because did not believe there would be any confusion between the brands.

In response, Heaven Hill hired “prominent consumer survey expert Hal Poret” to survey the marketplace. Some federal courts have held confusion rates between 25 percent and 50 percent can cause confusion, while other courts have found a confusion rate between 10 percent and 20 percent, with other supportive evidence, is strong enough.

Poret determined there was net confusion rate of 39 percent.

Heaven Hill gives a detailed account of the similarities between the two logos. Specifically, the distiller notes they both share the “dominant and distinctive” element of HEAVEN and are followed by a single-syllable, four-letter word of either HILL or DOOR. Also, both marks are printed in stacked, block-script letters.

The trademarks, Heaven Hill has told the court, are similar in appearance and sound. The whiskeys associated with these two marks will likely be sold in the same places and marketed to very similar consumers.

In fact, Heaven Hill pointed out Heaven’s Door has promoted and sold its product in and around Louisville, Kentucky, which is near Bardstown. The distiller told the court the defendant has “intentionally and willfully intended to trade upon the goodwill” of Heaven Hill and its HEAVEN HILL Mark.

Heaven Hill has also filed a motion for preliminary injunction. Heaven’s Door has not filed a response.

The case is Heaven Hill Distilleries, Inc. v. Heaven's Door Spirits, LLC, 3:18-cv-556.

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