Jack Daniels Maker Busy at the Trademark Appeals Board

An application was filed by Brown-Forman (distiller of Jack Daniels) to register the name of its “Woodford Reserve Double Oaked.” This high-end version of bourbon is aged in two charred-oak barrels rather than a standard one, a process which Brown-Foreman caims “extracts additional amounts of soft, sweet oak character” from the wood.

Jim Beam Brands Co. filed an opposition this week accusing Brown-Forman of trying to lock up a generic whiskey industry term that’s used on numerous bourbons that are produced using the “common” double-barrel aging process. Jim Beam would not oppose registration if there is disclaimer any trademark rights in the “Double Oaked” portion of the mark. “The ‘Double Oaked’ wording in the application is a generic designation that is incapable of distinguishing applicant’s alcoholic beverages from those produced and sold by others.” In the alternative, it argues it is merely descriptive of the product and that the company admits as much on the bottle itself where “Applicant’s product label states: ‘Select barrels aged a second time in charred American white oak barrel’ and includes an image of two oak barrels,” the notice of opposition says. “This wording combined with the image … reinforces the descriptive nature of applicant’s ‘Double Oaked’ wording.”

After being refused a registration on its application for “Woodford Reserve Double Spiced Rye,” based on a pre-existing registration for “Double Spice” owned by Shaw-Ross International Importers Inc., Brown-Forman responded with a cancellation proceeding for that registration arguing that a disclaimer on “spice” wasn’t enough to save the mark from being merely descriptive. “The ‘Double Spice’ mark shown in the registration is merely descriptive … of rum because the word ‘double’ in the mark means twice as large, heavy, strong, etc., or twofold in size, amount, number, extent, etc., while the word ‘spice’ has been disclaimed by respondent because it describes a feature and characteristic of rum.”

Brown-Foreman also opposed Clear Creek Distillery LLC’s application to register “Pearjac” for selling spirits. It argued a bar patron might be confused as to whether the drink was associated with or contained its Jack Daniels brand of spirits.