By Sepideh Nassabi - Litigation and Intellectual Property lawyer and Carol Liu (Student-at-Law)
On February 16, 2022, Tequila 512 filed a lawsuit in the U.S. for alleged trademark infringement committed by K & Soda LLC, a company owned by Kendall Jenner. Kendall Jenner is the daughter of retired Olympic gold medalist Bruce Jenner, now known as Caitlyn Jenner. If that doesn’t mean anything to you, Kendall Jenner is Kim Kardashian’s half-sister.
The allegation in the lawsuit stems from Jenner’s company “simply and blatantly” copying the branding of Tequila 512 for its own tequila brand, 818 Tequila.
This is not the first time negative publicity has found its way to Jenner’s alcohol venture. Previously, Jenner was criticized for cultural appropriation in the brand’s promotional images featuring Jenner riding on horseback in agave fields, as well as the brand’s usage of grammatically incorrect Spanish on the bottle labels. However, this is the first time someone has gone beyond social media accusations and taken the step of taking 818 Tequila to court.
What does this lawsuit mean for Jenner? Does Tequila 512 actually have a case with merits, or is it merely seeking buzz from the Kardashian-Jenner name?
A side-by-side image of the two bottles is available at: https://s.hdnux.com/photos/01/24/17/15/22082391/5/1200x0.jpg
Both brands use black bolded text on a yellow background for their bottle labels. Both brands have a three-digit numerical brand name that reference area codes. For example Tequila 512 is a reference to an area code of Austin, Texas, where the brand is based. Jenner’s 818 Tequila, similarly, is a nod to an area code in Los Angeles. Even though the three digits are different, Tequila 512 has taken the position that Jenner’s company essentially used the same branding with “immaterial tweaks.”
In Canada, the use of a “confusingly similar” trademark amounts to trademark infringement. So, the question to ask is whether Jenner’s brand is confusingly similar to the other brand? When considering this question, the court uses the consumer who is in a hurry and has an imperfect recollection. Would this consumer, who is in a hurry with an imperfect recollection, confuse the two brands? We might argue that in a rush at the LCBO on our way home and ready to make a margarita, the two brands have the same look and feel – and thus, may be confusingly similar. We will keep a close eye on the case and report back on any updates.
If you have questions regarding trademark registration or trademark infringement matters, contact Registered Trademark Agent and Litigation Lawyer Sepideh Nassabi at snassabi@mindengross.com.