Owner Of Tommy Gun Trademark Sues Vodka Manufacturer For Infringement Over Tommy-Gun Shaped Vodka Bottle

Trademark infringement suits are a common occurrence in the non-alcohol and alcohol beverage industries. Today comes one of the more interesting cases. The case involves the owner of the Tommy Gun trademark suing a vodka manufacturer for allegedly infringing on its mark by selling vodka in a tommy-gun shaped bottle.

On 27 March 2013, Saeilo Enterprises, Inc. filed a complaint against Alphonse Capone Enterprises, Inc. in the U.S. Northern District of Illinois for trademark infringement, trademark dilution, trade dress infringement, unfair competition, and deceptive trade practices.[1] Saeilo, a New York-based company, “is a diversified manufacturing company consisting of three divisions, including Kahr Arms…, a leading designer and manufacturer of quality firearms.”[2] On the other end is Alphonse Capone Enterprises—a Chicago-based company that sells a variety of products based on the Roaring Twenties, including “a full line of Roaring 20’s Beer, Wine, Spirits, and Tommyguns Vodkas.”

The product at issue concerns Capone’s Tommy Guns vodka, which is distributed in tommy-gun shaped bottle (shown below). While interesting, the bottle is kitschy and more of a novelty item for its packaging, as opposed to its quality.

Capone’s Tommy Guns vodka bottle; photo credit www.tommygunsvodka.com

The company also produces a line of tommy-gun inspired beers (shown below), but they are not included in the lawsuit.

Capone’s beer tap handles; photo credit www.tommygunsvodka.com

On its website, Capone describes its products and design in the following context:

PROHIBITION began in 1920 and consumed the entire decade making Chicago & Al Capone famous. Illegal Bootleggers, Bathtub Gin & Rumrunners were plentiful. Speakeasies flourished and Flappers were doing the Charleston and swingin’ to the Dixieland sounds of Louis Armstrong and Duke Ellington while Eliot Ness and the Feds were dodging the Roar of Tommy Guns. Today, Alphonse Capone Enterprises invites you to Taste the 20’s… Roaring 20’s beers, wines and spirits that is. From our untouchable trademark labels, designed in the art deco style, to our famous pin up gals that adorn all the Roaring 20’s labels, our products embody the spirit of the 1920’s through and through.

Per its complaint, “Saeilo owns common law trade dress rights in the design of the Thompson submachine gun, popularly known as the ‘Tommy Gun’.”[3] As of 2004, it also owns the word mark “Tommy Gun” and the Tommy Gun design.[4] Capone also has trademark registrations for its brand and designs under the numbers 2,849,028; 2,696,412; 2,955,440; and 3,402,327.[5]

[1] Saeilo Enterprises, Inc. v. Alphonse Capone Enterprises, Inc., No. 1:13 CV 02306 (N.D. Ill. Mar. 27 2013).

[2] Compl. at 3, supra note 1.

[3] Compl. at 4, supra note 1.

[4] Compl. at 4, supra note 1.

[5] Compl. at 19, supra note 1.

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