Heaven Hill Distillery was founded in 1935 and has been making bourbon whiskey ever since. After four score and three years, they keep a watchful eye on their trademarked brands including Heaven Hill whiskeys, liqueurs, vodkas, rums, tequilas and other distilled spirits. When the company learned that another whiskey brand was being introduced by the name Heaven’s Door Spirits, it got their attention, so much so that on April 25, 2018 Heaven Hill’s attorney’s sent a cease-and-desist letter to Heaven’s Door Spirits principals, Marc Bushala, Jeff Rosen, Andrew Rashkow, and Tom Flocco. The complaint is claiming infringement on their 83 year old trademarked name.
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The new Heaven’s Door venture is lead by Marc Bushala, Managing Partner at Rock Gate Partners. Bushala is a well known entrepreneur in the distilled spirits world. Bushala was the Chief Executive Officer of Angel Brands until 2015 when he and other investors sold the company’s flagship brand, Angels Envy Distillery to Bacardi in 2015.
“HEAVEN” is Confusingly Similar, Followed by Four Letters
In the complaint, Heaven Hill claims that, “The Infringing Mark adopted and used by Defendant is confusingly similar to Heaven Hill’s HEAVEN HILL Mark, in that they both share a dominant and distinctive element HEAVEN, resulting in similarities between the visual appearance, sound, and consumer connotation of the marks, and are: (i) used in connection with identical and highly related goods (ii) likely to travel in identical and overlapping trade channels; and (iii) marketed to identical or highly similar groups of consumers.”
Not surprisingly, Heaven’s Door Spirits, which is partially owned by folk singer and rocker Bob Dylan, thus the name Heaven’s Door, disagreed with the letter. “On May 3, 2018, counsel for Defendant sent a response to Heaven Hill’s cease-and-desist letter and indicated that Defendant did not believe a likelihood of confusion would result from its use of the HEAVEN’S DOOR Mark and advised that it did not intend to change the Infringing Mark or otherwise comply with the demands set out in Heaven Hill’s counsel’s cease-and-desist letter.”
Heaven Hill Consumer Survey Claims a 39% “Confusion Rate”
After receiving Heaven’s Door reply, Heaven Hill hired a survey firm to perform a “Squirt” survey, “which is an attempt to replicate the marketplace process of advertising exposure to a brand or trade dress, followed by being confronted in the market with both similar and differing brands or trade dresses.” The results of the survey concluded that the two brands had a 39% “Confusion Rate.” The filing from Heaven Hill says that courts have held that “Confusion Rates between 25% and 50% are extremely solid support for a finding of likelihood of confusion.
What is the “Squirt Survey Format”
The name “Squirt” comes from a survey format conducted in 1980, in SquirtCo v. The Seven-Up Company. SQUIRT was a trademark of SquirtCo. When the Seven-Up Company introduced QUIRST, SquirtCo argued that the similarity of names was confusing to customers.
Heaven Hill is asking for Heaven’s Door Spirits to, “cease all manufacture, display, distribution, marketing, advertising, promotion, sale, offer for sale,” of Heaven’s Door whiskey products and for them to, “deliver up for destruction or other disposition all goods, packaging, containers, advertisements, promotions, signs, displays, and related materials incorporating or bearing the HEAVEN’S DOOR Mark.” They are also asking for, “all profits realized by its wrongful acts.”
What do you think? Does Heaven Hill have a case or are they Knock, Knock, Knockin’ on the Wrong Door?