San Diego - A vodka maker on Tuesday lost its bid to bar Beam Inc., which makes Jim Beam bourbon and other spirits, from using a lip print design on its flavored Pucker Vodka bottles that the vodka maker claims is too similar to its own trademark.
The preliminary injunction sought by JL Beverage Co. LLC, which makes Johnny Love Vodka, cannot be granted because the trademarks at issue are not similar enough, a Nevada federal judge ruled.
"Just like snowflakes and fingerprints, no two lip prints are the same," Judge Miranda M. Du said. "And as with snowflakes, fingerprints, and human lips, the trademarks in this case are not so similar as to create consumer confusion."
The Johnny Love line of vodkas was created by bartender Johnny Metheny around 2003. At the time, Metheny owned several California restaurants and bars, most operating under the "Johnny Love" name. Inspired by the possibility of making money in the beverage business, Metheny said he set out to make a "better flavored vodka."
As part of this endeavor, one of Metheny's friends designed the lips image used on his vodka logo. In his declaration, Metheny stated that he chose to brand his vodka with lips because lips are "definitely sexy," but also "to impart flavor" by coloring the lips to denote the flavor within the bottle of vodka.
JL has used two trademarks featuring the lips image since July 2005, one of which has been registered with the U.S. Patent and Trademark Office since August 2006 and the other since October 2011.
Metheny sold the Johnny Love vodkas to Thomas Diab, JL Beverage's current president, in 2005. JL Beverage asserts that the company has spent considerable time, effort, money, and other resources developing and promoting vodkas bearing its two trademarks.
In the spring of 2010 Beam wanted to redesign and rebrand its Pucker vodkas in order to extend to brand into flavored vodka, and had an outside design firm put together a new label that contains a prominent image of a pair of lips, varying by color depending on the vodka flavor like Johnny Love Vodka. The new Pucker Vodka launched in the spring of 2011.
Beam attempted to register its lips design as a trademark with the PTO in March 2011, but an official in its legal department later learned that the lips were stock art from iStockphoto LP, and while it had a license to use the lips, it could not claim ownership. As a result, Beam withdrew its application.
Beam adopted the lips mark despite the fact that a Beam employee knew that JL Beverage uses lips trademarks in connection with its line of vodkas, according to JL.
But JL Beverage tried to define the relevant market for similar goods too narrowly, according to the judge. The fact that lips symbols are a prominent feature of several other alcohol products weakens the Johnny Love trademark, she said.