Diageo Wins Trademark Dispute Over Crown Royal

by T+B Blog Team on December 19, 2014

Diageo has won a trademark lawsuit filed against Texas-based Mexcor over the Crown Royal whisky brand. The dispute between the two companies began last year when the UK-based drinks maker filed a commercial slander suit against Mexcor for creating “disparaging” ads that referred to a product that looked like Crown Royal as “that poison.”

Then in March 2014, Diageo filed a trademark infringement and unfair competitive practices suit claiming that Mexcor’s Crown Club whisky, sold in bags that resemble the Crown Royal bags for which Diageo owns the trademark, was causing “rampant” customer confusion. Mexcor’s whisky is sold under the names of various U.S. states, including Texas Crown Club and South Carolina Crown Club.

The U.S. District Court of for the Southern District of Texas ruling ordered Mexcor to change the name and packaging of its whisky and to pay unspecified damages to Diageo.Nicole D’Amato, director and senior counsel for intellectual property at Diageo North America said: “We are pleased that the jury agreed with us that Mexcor has been confusing our consumers and diluting the strength of our Crown Royal brand, and that they will now have to change their name and packaging.”

Check out the two products below.

cr1 cr2

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Many of you know that Real Madrid footballer Cristiano Ronaldo is also known as “CR7,” a moniker that represents his initials and his jersey number. Last year, he launched a line of men’s underwear and socks under the brand name CR7.

Earlier this year, JBS Textile Group filed a U.S. trademark application for Ronaldo’s CR7 clothing brand, but it turns out the mark is already owned by Christopher Renzi who registered it in 2008. Now Renzi has filed a trademark infringement suit and says his Spanish representative hasn’t been able to serve Ronaldo with the papers. Apparently the Real Madrid office refused to accept the delivery since the suit doesn’t have anything to do with the team.

Have any of you seen Ronaldo lately? Renzi’s attorney said they haven’t been able to track him down, but they say they have succeeded in getting the USPTO to suspend JBS Textile’s trademark application in light of their pending litigation. Renzi’s team has until March 26, 2015 to serve Ronaldo with the lawsuit.

Coincidentally, there was more trademark news on the subject of men’s underwear brands this past week. In this story, a Norwegian company’s trademark application for the name of its underwear line was denied by the USPTO for being too vulgar.

Tonic Brands A.S. tried to register the brand name of its underwear called Comfyballs. The USPTO’s refusal cited four different dictionary definitions for the word “balls” and concluded: “In the context of the applicant’s goods, the mark, “COMFYBALLS,” means only one thing — that a man’s testicles, or ‘balls,’ will be comfortable in the applicant’s undergarments. The mark does not create a double entendre or other idiomatic expression. It is a straightforward use of the word ‘balls’ instead of testicles.”

Despite the USPTO refusal, Tonic Brands can still sell its underwear in the United States, although The Huffington Post reported that they are now considering new brand names like Comfypals. The company’s founder noted that the trademark had already been approved in the European Union “without hassle” since the region has what he called a “softer view on what is deemed to be vulgar.”

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Trademark Tug of War Over String Cheese Products

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