A recent trademark decision shows how important consumer survey evidence has become in trademark litigation concerning generic or descriptive marks. In an ongoing trademark dispute over the use of the term “double barreled” between Sazerac and Prichard’s, a federal court found that neither side had submitted the information necessary for it to rule – evidence of what the public thinks. You can read the opinion here.

Prichard’s makes Benjamin Prichard’s Double Barreled Bourbon and also has a trademark for “Double Barreled.”  – Double barreling is aging your whisk(e)y in one barrel and then moving it to another for more aging – using two barrels in the aging process.

Sazerac uses the phrase double barreled on some of its bourbon packaging.  Here are some of the different labels for these two companies:

Prichard’s sued Sazerac to get it to stop using the phrase on its labels claiming trademark infringement and Sazerac countersued claiming the mark was invalid because it was describing a process.  Both sides moved for judgment and in their briefs and supporting documentation, presented evidence from expert opinions, but neither presented evidence from consumer surveys or other information concerning what the public considered the phrase to mean.

In the opinion, the court appears to accept that the phrase “double barreled” is likely descriptive and generic, and at best, Prichard’s could only claim a mark if it had acquired a secondary meaning:

To acquire a secondary meaning in the minds of the buying public, an article of merchandise when shown to a prospective customer must prompt the affirmation, “That is the article I want because I know its source,” and not the negative inquiry as to “Who makes that article?” In other words, the article must proclaim its identification with its source, and not simply stimulate inquiry about it. West Point Mfg. Co. v. Detroit Stamping Co., 222 F.2d 581, 595 (6th Cir. Mich. 1955)

The court reviewed the evidence submitted by both parties and found that:

Neither party has carried its burden on the issue of whether “double barreled” is generic or merely descriptive because neither side has presented evidence concerning the relevant public’s view on these issues. Therefore, genuine issues of fact still exist regarding genericness and descriptiveness: (1) does the relevant public use the term “double barreled” as a designation of bourbon?; and s(2) has “double barreled” acquired secondary meaning as a source identifier for Prichard’s Distillery?

Noting that the experts all discussed that the phrase described a process, the court went on to remind the parties that “It is a term’s meaning to consumers, not professionals in the trade, that is the test for genericness and descriptiveness for ordinary consumer goods.”  Based on this lack of consumer understanding evidence, the court then denied the parties’ request for judgment.  

It’s likely that both parties will now attempt to gather consumer evidence either through surveys or through more expert testimony on what consumers think and then again request judgment on the evidence.  So what say you?  When you hear “double barreled” do you think only of Benjamin Prichard’s or of a process whereby some of the best whisk(e)y is imbued with two great sets of flavors.

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