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Keywords

appealsummary judgmentwilltrademarkgood faithnovation
willtrademarkgood faith

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Sazerac Brands, LLC v. Peristyle, LLC, 892 F.3d 853, 127 U.S.P.Q.2d 1677

Facts

The case involves a trademark dispute between Sazerac, the owner of the trademark rights to 'Old Taylor' and 'Colonel E.H. Taylor', and Peristyle, which purchased the Old Taylor Distillery property. Sazerac sued Peristyle for trademark infringement, unfair competition, and false advertising after Peristyle referred to its location as the 'Former Old Taylor Distillery' during renovations. The district court granted summary judgment in favor of Peristyle on all of Sazerac's claims, leading to cross-appeals from both parties.

Sazerac objected to Peristyle's use of the Taylor name and sued Peristyle for infringement. Because Peristyle used the Old Taylor name descriptively and in good faith, it finds shelter under the Lanham Act's fair use defense.

Issue

Did Peristyle's use of the 'Old Taylor' name constitute trademark infringement or false advertising under the Lanham Act?

Did Peristyle's use of the 'Old Taylor' name constitute trademark infringement or false advertising under the Lanham Act?

Rule

The Lanham Act prohibits the use of any term that is likely to cause confusion regarding the source of goods. However, the fair use defense allows for descriptive use of a trademark in good faith, provided it does not mislead consumers. The benchmark for trademark infringement is whether there is a likelihood of consumer confusion, assessed through an eight-factor test.

Analysis

The court found that Peristyle's use of 'Old Taylor' was descriptive and geographic, identifying the location of the distillery rather than branding its products. The court noted that Peristyle acted in good faith, recognizing Sazerac's trademark rights and intending to develop its own brand name. The evidence showed that Peristyle's references to 'Old Taylor' were not misleading, as they accurately described the historic site.

Peristyle used the Old Taylor name in a descriptive and geographic manner. It referred to Old Taylor to pinpoint the historic location where Peristyle planned to make a new bourbon, not to brand that bourbon. Keep in mind that Peristyle has not begun selling its bourbon. It won't hit the shelves for four years. When it does hit the shelves, the bourbon will be called Castle & Key and Peristyle does not plan to put 'Old Taylor' on the bottle.

Conclusion

The court affirmed the district court's summary judgment in favor of Peristyle, concluding that its use of the 'Old Taylor' name constituted fair use and did not infringe Sazerac's trademark rights.

We affirm the district court's judgment.

Who won?

Peristyle prevailed in this case because the court determined that its use of the 'Old Taylor' name was descriptive and in good faith, aimed at identifying the historic location of the distillery rather than infringing on Sazerac's trademark rights. The court emphasized that Peristyle did not attempt to capitalize on Sazerac's goodwill but rather acknowledged the historical significance of the site.

Peristyle is not attempting to trade off the goodwill of Sazerac. Instead, Peristyle is enjoying the goodwill already ingrained in the property it purchased and is advertising itself for what it is: a distillery first built by Colonel Taylor, subsequently abandoned, but once again purchased, renovated, and restored to life as Castle & Key.

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