The U.S. District Court for the Western District of Kentucky issued a decision steeped in two rich holiday traditions—family lore and alcohol. On Dec. 16, 2021, the court entered a preliminary injunction against Log Still Distilling LLC in a trademark infringement and unfair competition action brought earlier this year by Heaven Hill Distilleries Inc., both manufacturers of bourbon. Heaven Hill is a large family-owned distillery founded in Louisville, Ky., in 1935. Log Still was founded in 2018 as a new distillery, line of spirits and tourist destination in Gethsmane, Ky.
The story of how Heaven Hill and Log Still arrived in a trademark battle in federal court begins with Joseph Washington “J.W.” Dant, who first distilled bourbon as a teenager in 1836. J.W. Dant’s unique distilling method entailed running a copper pipe through a hollow poplar log, filling the pipe with fermented mash, and passing steam through the pipe.
The resulting liquor became J.W. Dant-branded bourbon whiskey. Dant’s namesake distillery continued producing J.W. Dant whiskey after Dant’s death in 1902, and after Prohibition obtained two federally registered trademarks (U.S. Reg. Nos. 320,981 and 376,057):
The distillery and the marks changed hands several times in the mid-20th century, ending in Heaven Hill buying the J.W. Dant brand (among others) in 1993. Today, J.W. Dant bourbon is available for $15 to $18 on the bottom shelf of liquor stores in most states.
Meanwhile, in Gethsmane, J.W.’s great-great-great-grandson John Wallace “Wally” Dant III and some of his cousins founded Log Still to “revive” their family’s place in the bourbon business. Wally initially approached Heaven Hill about buying the J.W. Dant brand, but Heaven Hill declined. Undaunted, Log Still launched its Monk’s Road-branded bourbon and sought to infuse its promotion with the family’s history and, according to Log Still’s internal marketing documents, create “ties to the J.W. Dant name whether the brand can be used or not.”
These ties begin with the Log Still Distilling name, which evokes J.W. Dant’s original method of distilling bourbon by pouring it through a hollowed log. Log Still went further—naming its distillery “Dant Crossing” and billing its brand as the “rebirth of the J.W. Dant legacy” among other homages to the family’s famous ancestor. In response to Log Still’s social media posts containing these themes, Heaven Hill sent cease-and-desist letters. Heaven Hill also opposed Log Still’s attempt to federally register a “Dant & Head” trademark and ultimately filed suit.
Throughout, Log Still’s marketing strategy invoked themes of “reviving a legacy,” “heritage revived,” and “reviving the Legacy one barrel at a time.” Log Still acquired the domain name JWDant.com and, for a time, directed traffic to Log Still’s website. That website described the “heritage” and “Dant Legacy” Log Still claimed to be reviving and that Log Still’s “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.” Log Still declared on social media that “we’re the Dant family … and we’re back in the bourbon business.” A few posts even featured old photos that included the trademarked J.W. Dant logo and bottles.
All of this led the court to conclude that Log Still was using the J.W. Dant name in a manner likely to cause consumers to be confused about the (lack of) relationship between the two brands. The court began its analysis with two threshold issues: First, whether Heaven Hill had valid protectable rights. On this issue, Log Still argued that Heaven Hill had “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.” This argument was rejected as lacking in in any legal basis, as the mark was not abandoned and did not have to be a thriving enterprise to be protected from infringement.
Second, the court determined that Log Still was using the J.W. Dant marks and indicia of goodwill as a source identifier, brushing aside Log Still’s “descriptive use” defense. Log Still was not referencing the J.W. Dant name and legacy in an academic non-trademark manner; rather, it was drawing on the J.W. Dant legacy to sell commercial products. Log Still also failed another test for good-faith, non-trademark use—the court decided that the story Log Still was selling was not true. In particular, Log Still’s attempts to trace its history to 1836 merely co-opted the Dant Distillery Company’s story, a legacy the Dant family sold long ago and that Heaven Hill purchased in 1993.
The court’s decision is a warning to distant descendants of the founders of famous brands about attempting to cash in on a family legacy that another entity owns. On the issue of whether an individual has an unqualified right to use his or her own name in marketing a product, the answer today is “no.” As the court pointed out, “A century ago,” Log Still’s principal 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.” But this doctrine changed as courts eventually recognized “that names could confuse as easily as any other trademark.”
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