Pennsylvania Federal Court Approves Whiskey Distiller's Lawsuit To Invalidate Rival's "Boxtails" Trademark
By: Carl L. Engel
On January 10, 2023, the U.S. District Court for the Middle District of Pennsylvania, in the case Central Penn Distilling, Inc. d/b/a Mason Dixon Distillery v. Drakes Organic Spirits, Inc., ruled that a whiskey distiller could bring its claims to invalidate a rival’s “Boxtails” trademark in front of a jury at trial. The court reasoned that there were sufficient allegations and evidence to make the case the term “boxtails” had become so widely used, that a jury could find that it had become a generic term that cannot be subject to trademark protection. The case illustrates the risk of enforcing a trademark that is in the process of becoming a common word, because what began as a cease-and-desist letter from Drakes Organics Spirits has exploded into a lawsuit challenging its ability to protect its mark at all.
Mason Dixon Distillery distills and bottles spirits, and offers them for sale throughout Pennsylvania and in several other states. In November 2019, it launched a line of premixed boxed cocktails, which it marketed and sold under the “Boxtails” trademark on its website and at its store in Gettysburg, Pennsylvania.
In January 2021, Mason Dixon Distillery received a cease-and-desist letter from Drakes Organic Spirits, a Minnesota company, that had been selling premixed boxed cocktails under the trademark “Drake’s Organic Boxtails.” Drakes Organic Spirits claimed that it had exclusive right to the trademark “Boxtails” in connection with premade cocktails, and asserted that it had already registered the mark with the U.S. Patent and Trademark Office.
On February 4, 2022, Mason Dixon Distillery filed a lawsuit to cancel Drakes Organic Spirits’s trademark. In its complaint, it argued that Drakes Organic Spirits had not registered the “Boxtails” trademark until February 24, 2021, after Mason Distilling Company had been using it for more than a year. Further, Drakes Organic Spirits only started using the “Boxtails” trademark in October 2020, almost a year after Mason Dixon Distillery launched its “Boxtails” product. Mason Dixon Distillery also argued that the term “boxtail” is a generic word understood by the public to mean “boxed cocktail,” and Drakes Organic Spirits should not be allowed to monopolize it. Drakes Organic Spirits moved to dismiss the lawsuit.
On January 10, 2023, the District Court refused to dismiss the lawsuit, and allowed Mason Dixon Distillery to proceed with its claim to cancel the “Boxtails” trademark. The court reasoned that Mason Dixon Distillery had made sufficient allegations in its complaint that use of the term “boxtails” had become widespread, such that it had become a generic mark that cannot be assigned to a single company. The court observed that other common words, such as “cellophane,” “escalator,” and “thermos,” had begun as trademarks and had become unprotectable generic terms through widespread use. The court held that a jury could reasonably reach the same conclusion as to the term “boxtails” and, therefore, Mason Dixon Distillery could proceed with its lawsuit.
Drakes Organic Spirits is now left with a decision as to whether to come to an agreement with Mason Dixon Distillery for their shared use of the “boxtails” trademark, or whether to risk a jury invalidating the trademark altogether by finding that it has become a generic term. Merchants seeking to protect their trademarks should keep Drakes Organic Spirits’s experience in mind, when deciding whether to enforce a term that is in widespread use. As Drakes Organic Spirits has discovered, a minor dispute between two parties over the use of a generic mark can explode into lawsuit that puts the entire brand at risk.