Thousand Oaks Barrel Co., Llc, v. Deep South Barrels Llc,

241 F. Supp. 3d 708 (2017)

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Nature of the Case

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Facts

P is a Virginia limited liability company with its principal place of business in Manassas, Virginia. D is a Texas limited liability company located in Pearland, Texas. P manufactures and sells miniaturized bourbon barrels that allow individuals to age and flavor their own liquor. P also created a 'barrel mug' product, which is a wooden beer mug that looks like a small barrel. P has an e-commerce website to advertise and sell its products. Plaintiff also began setting up vendor booths in outdoor festivals to sell its products, and P became a wholesale supplier of its barrels to retail outlets. In 2008, P purchased a laser engraving machine so that they could create personalized barrels for customers by burning graphics or customers' names on the end of the barrel. P created a catalog of images customers could choose to engrave on the barrels they purchased from P. Plaintiff alleges that its barrel products have been a significant commercial success, as P has sold hundreds of thousands of barrels through its website and various retail outlets. P has submitted for copyright registration (i) the graphic designs for the barrels, (ii) the website pages, (iii) the product catalogs, and (iv) various product labels. P alleges that it has acquired common law trademark rights in the marks for four of its products: (1) the 'Bootleg Kit' mark, which identifies a product launched in 2006 that allows customers to flavor their spirits in a miniature barrel, (2) the 'Cigar Infusion Barrel' mark, which plaintiff began using in 2007 to identify a product line of oak barrels designed to store and flavor cigars, (3) the 'Wedding Barrel' mark, which plaintiff began using in 2011 to identify a miniature oak barrel designed to hold wedding cards and other wedding gifts, and (4) the 'Top Shelf Taste at a Bottom Barrel Price' mark, which plaintiff began using in 2006 as a tagline for its Bootleg Kit product. Pf has also submitted the Bootleg Kit, Cigar Infusion Barrel, and Wedding Barrel marks for registration with the United States Patent and Trademark Office (PTO), and the trademark applications are currently pending with the PTO. P sued D alleging that D copied engraving designs, trademarks, and product lines and thereby unlawfully traded off P's goodwill and reputation. D has used the phrases 'Bootleg Box,' 'Bootleg Kit,' 'Cigar Infusion Barrel,' 'Wedding Barrel,' and 'Top Shelf Liquor at Bottom Shelf Prices' to identify D products that are similar to P's products. Plaintiff brings eight claims one of which was common law misappropriation. D seeks in part dismissal of Ps claim for common law misappropriation.