The Eleventh Circuit (Savannah, GA) court inLos Angeles has ordered that Tiger Paw Beverages may continue to manufacture, distribute and promote its popular brand, “Purple Haze” liqueur. The order comes after a lawsuit was filed against Tiger Paw Beverages LLC, co-owned by Leon Hendrix (Jimi Hendrix’s biological brother) and Joe Wallace. The action was filed by the Jimi Hendrix Family Companies, operated by step-sister, Janie Hendrix (Plaintiffs) stating that Tiger Paw allegedly infringed upon and diluted their trademarks.
Tiger Paw sells and distributes a premium beverage under the brand, Purple Haze Liqueur. The Plaintiffs do not sell or distribute any products in this class and have stated on the record that “they choose not to sell” and “do not own and wish not to be involved in” the sales of such products. According to the Eleventh Circuit court, “to succeed on the merits of a trademark claim, a plaintiff must show (1) that it has trademark rights in the mark or name at issue and (2) that the defendant adopted a mark or name that was the same, or confusingly similar to the plaintiffs’ mark, such that there was a likelihood of confusion for consumers as to the proposer origin of the goods (or services) created by the defendant’s use of the name.” Ferrellagas Partners, L.P. V Barrow, 143 F. App’x 180, 186 (11th Cir. 2005).
In regards to the similarities of the alleged infringement, the court concluded that “when considering the text “Purple Haze Liqueur” and its accompanying formatting, that the mark is not similar to any of Plaintiff’s registered trademarks. Second, the stylized “PH,” which could arguably be viewed as a “JH” is different in both style and in text from Plaintiff’s trademarks. As such, there are not enough similarities in the style of the logo to move forward on this claim.” The courts also weighed in the favor of Tiger Paw stating that there are no similarities in sales methods because the plaintiffs sell their products online, whereas Tiger Paw uses third parties to distribute its products to retail stores that sell “Purple Haze” Liqueur and other liquor to the public.
The plaintiffs’ also failed to prove their dilution claim. The courts states; “in the Eleventh Circuit, (i) it is well established that (a) preliminary injunction is an extraordinary and drastic remedy not to be granted unless the movant clearly establish(s) the burden of persuasion.” To do this, the plaintiffs “must provide sufficient evidence that (1) the mark is famous, (2) the alleged infringer, adopted the mark after the mark became famous; (3) the alleged infringer diluted the mark; and (4) the defendant’s use is commercial and in commerce.” None of which can be achieved without a trademark to dilute.
In conclusion, the Courts found that, “the plaintiffs have not produced any evidence indicating that members of the public have confused Tiger Paw’s product with Plaintiffs or their trademarks, and the plaintiffs’ have not demonstrated actual confusion with respect to their marks.” Additionally, the Courts agreed that “while the Plaintiffs’ trademarks are strong, Tiger Paw marks are not sufficiently similar; Tiger Paw’s marks have not actually been confused with Plaintiff’s; and Tiger Paw has not acted in bad faith with respect to Plaintiffs’ marks”, and “as for the Plaintiffs’ marks and the marks found on Tiger Paw’s product labeling, no substantial likelihood of confusion exists to prevent Tiger Paw from distributing their product” as the Plaintiffs sought. – PRNewswire