Thomas Machine Gun Sues Tommy Gun Vodka
Saeilo Enterprises Inc, the manufacturer of the Thomson Machine Gun, also known as the Tommy Gun, sued the Alphonse Capone Enterprises Inc., the producers of Tommy Gun Vodka.
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The Tommy Gun gained infamy during the mob wars of the prohibition era. Saeilo Enterprises still manufactures and sells the weapon through their subsidiary Auto-Ordnance, which is often recognizable by the large round drum magazine accessory, although not available in selective fire mode.
Saeilo filed a ten-count complaint against Alphonse Capone Enterprises, including federal trademark infringement, dilution, false designation of origin, and trade dress infringement under the Lanham Act. The remaining counts are based upon state law and common law.
The test for trademark infringement under the Lanham Act is ‘likelihood of consumer confusion’. There are currently ten registered and live marks for Tommy Gun(s) across a number of companies and classes. Alphonse Capone Enterprises may be able to refute the infringement claim.
Trademark dilution is found where a famous mark’s distinctive quality is diluted by a third party’s use of the same or similar mark, not necessarily within the same class of good. It is quite possible that Tommy Gun Vodka could be found liable for trademark dilution.
Trade Dress Infringement occurs when when a product’s non-functional overall design and appearance of the product or packaging is appropriated by another, thereby causing the likelihood of consumer confusions as to the source of the product. Even if Alphonse can prove that aspects of the Tommy Gun are functional, the overall combination of features may nonetheless be nonfunctional and thus protectable. 807 F.2d Hershey Foods Corp v. Mars, Inc., 998 F. Supp. 500, 514 (M.D. Pa. 1998). This appears to be an argument that Saeilo can win.
Saeilo is requesting the destruction of all materials bearing the trademarks, including the bottles resembling the Tommy Gun and all other packaging and marketing materials. Of course, Saeilo is also requesting monetary damages, costs, and fees.
I personally like the design and aesthetic quality of the Tommy Gun Vodka bottle and other marketing materials, such as the taps in the picture below. However, it appears that Alphonse Capone Enterprises is going to have a tough battle ahead of the.
The complaint is available here.
Image courtesy of tommygunvodka.com
