U.S. District Judge Rules in Favor of Heaven Hill in J.W. Dant Trademark Case
A U.S. District judge in the Sixth Circuit has ruled in favor of Heaven Hill in a pivotal infringement case, involving Log Still Distilling’s attempted use of the J.W. Dant name and legacy. Since 1993 Heaven Hill has owned the trademark for J.W. Dant, an historic trademark with an original use dating back to 1836.
The landmark decision requires Log Still to remove references to J.W. Dant and the story of the brand’s namesake from its communications, products, labels, logos, signage and other marketing and to remove references to the year 1836, the year J.W. Dant began distilling Bourbon by pouring it through a hollowed log. Any continued reference by Log Still to the historic Dant name in conjunction with distilled spirits must include a conspicuous disclaimer stating Log Still does not own the J.W. Dant brand.
History
The J.W. Dant brand was created by Joseph Washington Dant in the 1800s, and his descendants, including his great-great-great grandson John Wallace “Wally” Dant III attempted to use the Dant name in conjunction with the distilled spirits they started to produce and market at Log Still in 2018. The company’s marketing materials, including the labels on its products, went so far in trying to claim the “Dant heritage and legacy” in their branding that they added claims that the Log Still brand was “est. 1836”.
The Dant family has not owned the J.W. Dant brand since 1943 when it originally sold the trademarks and goodwill to United Distillers of America. Guinness subsequently acquired the mark, and then it was sold again to Heaven Hill in 1993. Heaven Hill has been actively selling and marketing the brand since that time.
Log Still also registered the URL, jwdant.com, and redirected traffic to its main Log Still website – this led Heaven Hill to amend its original complaint to include a cybersquatting claim. Log Still quickly took down the redirect to it website after the amended complaint was filed.
The Lawsuit and Resulting Court Order
After a year and a half of discussions with Log Still, cease and desist letters, and matters filed with the U.S. Patent and Trademark Office (where Heaven Hill prevailed), Heaven Hill was forced to file a trademark infringement lawsuit against Log Still in March 2021 when Log Still continued its infringing activity that violated Heaven Hill’s exclusive rights to use, and benefit from the goodwill of, its historic trademark.
The injunction was issued by the Sixth Circuit on December 16, 2021 and required Log Still to start taking immediate action to comply with the court’s order and cease its infringing activity. In the 58-page opinion, the court commented in its opinion that Log Still’s intent to cause confusion and exploit Heaven Hill’s goodwill in the J.W. Dant trademark was “legally damning.” And the court further opined that, “Direct evidence of intent, as trial judges regularly instruct juries, is hard to come by. Yet the Log Still marketing plan is about as close as many lawyers will ever come to a smoking gun.”
The decision, that was overwhelming in favor of Heaven Hill, is the culmination of a two-year effort by our Legal & Compliance team and creates significant precedent for the enforcement of trademarks in the distilled spirits industry.
Read the decision here, and learn more about the lawsuit in the articles below.
Distill a TM Owner’s Goodwill at Your Bourbon Co’s Own Peril (Law360)
Federal court blocks effort to ‘revive’ J.W. Dant bourbon brand (lanereport.com)
