Large-scale whiskey distillery, Jack Daniel’s, has filed a trade dress lawsuit against a small whiskey distillery, Popcorn Sutton’s Tennessee White Whiskey (“Sutton”), claiming Sutton’s bottling and labeling is “confusingly similar” to the easily acknowledged Jack Daniel’s packaging.
At their start, Sutton Whiskey was produced in mason jars to pay homage to its white whiskey founder, the late Marvin “Popcorn” Sutton. However, in late 2012, Sutton debuted new square-shaped bottles with a different label. This alteration was the catalyst behind Jack Daniel’s legal action seeking to have those bottles removed from the market. According to Jack Daniels, Sutton’s use of the new Popcorn Sutton’s trade dress in connection with their Tennessee white whiskey is likely to cause purchasers and prospective purchasers of the product to believe mistakenly that it is a new Tennessee white whiskey product in the Jack Daniel’s line.
Specifically, the lawsuit alleges that both whiskey bottles are square shaped with angled shoulders and sloped corners. Additionally, both whiskey bottle labels contain white text on black labeling. Finally, Sutton’s font style on its bottle labeling is comparable to the Jack Daniel’s label. In addition to seeking an injunction on Sutton’s new bottles, Jack Daniel’s is also seeking an unspecified amount of damages. According to reports, Sutton has been non-responsive to inquiries about the lawsuit.
Trade dress refers to the total image and overall appearance of a product or business — its packaging design, color scheme, shape, labeling, and other visual elements that consumers associate with a particular brand. Under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), trade dress that is inherently distinctive or has acquired secondary meaning through use is protectable, provided it is non-functional.
Jack Daniel’s has some of the most recognizable trade dress in the spirits industry: a square bottle with a black label, angular shoulders, and distinctive typography that has been associated with the brand for over 150 years. That consistent visual identity — maintained across countless marketing channels and point-of-sale presentations — has created strong secondary meaning. Consumer surveys, advertising expenditures, and years of consistent commercial presentation all support a finding that the Jack Daniel’s trade dress is protectable.
Trade dress is only protectable if it is non-functional. Under the doctrine articulated in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), a feature is functional — and therefore unprotectable — if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. A square bottle shape is an interesting test case: is the square cross-section purely aesthetic (suggesting protectability) or does it serve a functional purpose like efficient stacking or dispensing? Courts analyze this question on a case-by-case basis, and the analysis can be outcome-determinative in trade dress cases involving product configuration.
Even where trade dress is distinctive and non-functional, the plaintiff must prove a likelihood of consumer confusion. In the Sixth Circuit, courts apply the multi-factor test from Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir. 1982), examining factors including the strength of the mark, the similarity of the trade dress, the similarity of the goods, evidence of actual confusion, the marketing channels, and the sophistication of the likely purchasers. In a spirits market where consumers may make impulsive decisions based on shelf appearance, the degree of care exercised at the point of purchase is a critical factor.
The Jack Daniel’s lawsuit against Popcorn Sutton sent a clear signal to the craft spirits industry: established brands with distinctive trade dress will enforce their rights aggressively against competitors whose packaging creates a risk of consumer confusion. For craft distillers, wineries, breweries, and other beverage producers, the lesson is to conduct thorough brand clearance — including trade dress clearance — before committing to packaging designs. A design that references or closely resembles a well-known brand, even unintentionally, can trigger expensive and disruptive litigation.
If you seek representation in a trade dress infringement lawsuit — whether you are asserting or defending a claim — contact the trade dress attorneys at Revision Legal at 855-473-8474 or through our online contact form.
The food and beverage industry is one of the most active areas of trade dress litigation. Product packaging — the total visual impression created by a bottle’s shape, label design, color scheme, and typography — is often as important as the product itself in driving consumer recognition and purchase decisions. When consumers make impulse purchase decisions in a crowded retail environment, the visual identity of a product on the shelf can be determinative. This makes trade dress both extremely valuable and frequently contested.
For established brands like Jack Daniel’s, whose trade dress has become deeply embedded in consumer memory over decades of consistent use, the legal case for trade dress protection is strong. For emerging brands entering a crowded category, the challenge is to develop distinctive trade dress that does not inadvertently reference a well-known competitor — and to register that trade dress with the USPTO as quickly as possible to create a public record of ownership.
Revision Legal advises food and beverage brands on trade dress clearance, registration, and enforcement. Whether you are launching a new product and need clearance before you commit to packaging, or defending your established trade dress against a competitor who has copied your look, our trademark attorneys have the expertise to help. Contact Revision Legal at 855-473-8474 or through our online contact form.
Revision Legal is a national intellectual property and internet law firm that represents clients across the United States in trademark, copyright, trade secret, and internet law matters. We are a firm of specialists — not general practitioners who handle IP work as one component of a broad practice, but attorneys whose entire professional focus is on the intersection of technology, creativity, and commerce.
Our attorneys have handled cases at every level of the federal court system, including the United States Court of Appeals for the Federal Circuit, the Sixth Circuit, the Ninth Circuit, and before the Trademark Trial and Appeal Board. We manage trademark portfolios for hundreds of clients, ranging from individual entrepreneurs registering their first mark to publicly traded companies maintaining global trademark portfolios across dozens of countries.
We believe that access to expert legal counsel should not depend on the size of your organization. Revision Legal’s flat-fee service model for routine IP matters — trademark registration, copyright registration, DMCA notices, and standard licensing agreements — allows small businesses, startups, and individual creators to access the same quality of legal representation that larger companies receive, at a price that is predictable and fair. For complex litigation and contested proceedings, we work efficiently to achieve the best possible outcome for our clients while managing costs responsibly.
Whatever your intellectual property or internet law need — whether you are protecting a new brand, enforcing your rights against an infringer, defending against a legal demand, or navigating a complex licensing transaction — Revision Legal has the expertise to help. Contact us today at 855-473-8474 or through our online contact form to discuss your matter.
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