While we typically spend our time chatting about online trademark issues, I couldn’t help but notice a case involving brick and mortar liquor stores which were made to change their name based off a state trademark on the term “Discount Liquor”
Make that three liquor stores that were made to change there name because one company has a trademark on the term “Discount Liquor”.
The owner of Wisconsin’s “Discount Liquor” filed a lawsuit against Vliet Discount Liquor, claiming that the Vliet infringed upon Discount Liquor’s trade name and registered Wisconsin trademark of Discount Liquor and WON!!!
“Litigation was truly our last resort in this case. However, we could not stand by and allow customers to continue to be confused about whether our business was in any way connected to these other ‘Discount Liquor’ stores,” said Frank Greguska, an officer of Discount Liquor.”
“We could not risk any damage to our business’s excellent reputation that may have been done by the operator of an unrelated store with a confusingly similar name.”
As part of the court order, Vliet Discount Liquor must immediately remove the words “Discount Liquor” from its business name and it further agreed that it would abandon any pending or current trademark applications it was seeking.
“Discount Liquor is quite pleased with the result of this case and two other recently decided trademark cases in Milwaukee County Circuit Court,” said Greguska.
So far, in addition to the Vliet Discount Liquors case, Cleveland Discount Liquors, and Ridins Discount Liquor, have either agreed or been ordered by a court to immediately drop the word “discount” from their signs and advertising, and to not pursue any trademark registration of the name.
For more information click here.
I would consider this to be an unjust decision. “Discount liquor” is too generic in nature to receive exclusive trademark protection. Wasn’t there a similar dilemma with “Cheap flights” not that long ago?
Apple has already sued or warned nearly everybody that have used the word “apple” or an “apple” as logo 🙁
So how does a Wisconsin trademark get enforced against a company in Cleveland, Ohio? What’s the likelihood of consumer confusion there, and how much goodwill can there be in such a generic phrase? What’s next — lawsuits against retailers that use terms like “fine wines” in their name?
I guess the losers in these cases can always switch to the term “cheap booze”, unless someone claims a trademark in that as well 😉
Finally, based on this precedent. I can’t wait to see the lawsuits over Ray’s Pizza or Blarney Stone bar on the island of Manhattan alone, as there’s dozens of each all operated by unrelated entities.
Phil
I believe the store named cleveland liquor is in Milwaukee Too
Still, Mike, what is the likelihood of consumer confusion even if they are in the same town? Isn’t the use of the modifier Vliet, Cleveland, or Ridins going to make that probability just about zero? If someone gets bad service from Vilet is it going to hurt the goodwill of Discount Liquor?
This would be like an airline that’s named “Airline” suing United, American and Delta for infringing on its trademark, even though the additional word clearly differentiates those competitors. Seems to me that the decision has given inordinate power to a company that has chosen to use two generic dictionary words as its trade name.
That’s very fundamentally wrong. Goes against everything trademarks are supposed to stand for.
They can simply add an ‘s’ to liquor to make it Vilet Discount Liquors. Problem solved.
This decision turns trademark law on its head. Go to the United States Patent and Trademark Office and search for CUB DISCOUNT LIQUOR, which expressly disclaims “Discount Liquor.”
So if the Milwaukee company were to go into a UDRP proceeding it would most likely lose. This is because disclaimed terms in trademarks are an admission that the terms are merely descriptive because one cannot have a monopoly over commonly used words. Ordinarily, UDRP panels find that disclaimers in trademarks and commonly used words in a respondent’s domain name do not merit transfer of a domain name (reminds me of the Cheapcarinsurances.com case I successfully defended). The same reasoning essentially also holds true in the US federal courts.
I couldn’t get a copy of any reported decisions in the Milwaukee cases and I couldn’t locate any specific Wisconsin state trademark statutes as I don’t practice in that state, but if I were defending the other “discount liquor” stores I would argue that the term is commonly used — what we call a crowded field of marks — and therefore those words are not capable of achieving trademark protection.
The article that MHB linked says that one liquor store is going to fight the case.
Thanks for sharing the article, MHB!
the land of ignorant fools for real
Karen
I found a few articles about the case but not the case itself
However on the federal and UDRP front I wouldn’t brush this scenario off an beng impossible.
I point to the very generic term Tractor Supply which is trademarked at the Federal level and has been used to win numerous domain names using the very generic term
whenever you hear some excuse like “litigation was our last resort…”, it’s a dead giveaway they are thinking litigation ALL THE TIME, regardless of the merits or lack thereof. they know they’re overstepping a line, lest they would not have to make excuses for their behaviour. they’re bad businesspeople, but good clients for lawyers.
maybe this will go viral and people will boycott the offending liquor store.
“the land of ignorant fools for real”
Checked the whois on the link in your name. The Ukraine?
If you’re going to throw stones, doing so from a massively impoverished dump probably isn’t a good place to be taken seriously.
Yes, this is an awful decision, but there are procedures to challenge and invalidate overreaching marks, which will hopefully be done here.
so, soon or later, also Facebook may TM the words “face” and “book” forever… 🙁
Is it true that over 50% of America’s “exports” are intangible? Is “intellectual property” really America’s major export?
Can sustainable economies be based primarily on intangibles?
What about natural resources?
Might it be shortsighted to criticise countries whose economies still rely primarily on natural resources and other tangible exports?
Or to criticise countries whose domestic economies have become critically reliant on intellectual property, who must continually embrace more of the antagonistic ownership dispute culture disputes that such a system produces?
Ignorance and foolishness are not defined by government synthesised national boundaries.
“Wherever there are people, there will be ignorance and foolishness.” – Abraham Lincoln
This whole case sounds like a preamble to try and set up a UDRP for either DiscountLiquor.com, DiscountLiquors.com or both.
not too far fetched an idea when one considers they use the domain name “discountliquorinc.com”.
they are reaching consumers well outside the state of wisconsin with that sort of domain name. and they know it.
imagine them arguing as a complaiant in a udrp that “discountliquor.com” is confusing to their consumers in the state of wisconsin.
the respondent should ask for the complainant’s server logs showing large numbers of wisconsin ip’s.
“””Checked the whois on the link in your name. The Ukraine?
If you’re going to throw stones, doing so from a massively impoverished dump probably isn’t a good place to be taken seriously.
Yes, this is an awful decision, but there are procedures to challenge and invalidate overreaching marks, which will hopefully be done here.”””
so what??? I am surprised to learn about some blatant acts of foolishness and ignorance leading to such court decisions.
you know i’m not as brainwashed with your BS, and still have common sense unlike you by friend
MHB, as you know it’s how the domain name is being used, so if someone registered TRACTOR SUPPLY for sales of fencing equipment for cattle and the domainer had PPC links to fences, then I could see a problem.
The big issue with the Wisconsin case is that the mark DISCOUNT LIQUOR is being used to sell just that, discount liquor. Had they sold perfume under “Discount Liquor” or had a clothing line for the mark and its competitors were also selling perfume and clothes under that name, then I could see where the Wisconsin company would have much stronger trademark rights. Then, they’d be moving away from a decriptive mark into a suggestive or arbitrary mark, which are much stronger in terms of trademark protection. If you ever come across any docs in this DISCOUNT LIQUOR case, I’d be really interested to read them.
UPDATE
The “trademark holder” has now filed suit against another liquor store and is seeking $5 Million in damages:
The owner of Brook-Falls Discount Liquor, 14835 W. Lisbon Road, is being sued in a trade-name infringement lawsuit that seeks $5 million in punitive damages for unauthorized use of the moniker
http://www.brookfieldnow.com/news/121582369.html