Maker’s Mark and cigar manufacturer in legal dispute

Beam Suntory-owned Bourbon brand Maker’s Mark and fellow Kentucky-based business Ted’s Cigars are suing each other over a trademark dispute relating to a red wax seal.

The two companies had previously worked together for almost 20 years after the owner of Ted’s Cigars, Theodore ‘Ted’ Jackson Jr, created a bourbon-seasoned cigar for the distiller’s Kentucky Derby party. A formal arrangement was then put in place whereby Jackson was allowed to use Maker’s Mark trademarks in return for 10% of the net sales on the cigars.

Jackson subsequently sold a selection of Bourbon cigars sold in glass tubes sealed with red dripping wax, similar to the bottles used by Maker’s Mark.

The partnership was terminated in December 2015 when the distiller’s chief operating officer, Rob Samuels, ended the licensing agreement, giving Ted’s Cigars until June 2016 to sell off its branded stock.

Maker’s Mark filed its initial suit last Tuesday (8 January) at the U.S. District Court in Louisville, demanding that the cigar manufacturer cease using its trademarks.

In a statement, the distiller said: “Maker’s Mark goes to great lengths to protect the invaluable intellectual property assets that the Samuels family has built over generations. We attempted to resolve this matter amicably, but we were unable to do so. As a matter of company policy, we will not comment on the details of the litigation.”

Jackson filed a countersuit on the same day, stating that he had spent US$200,000 removing the distiller’s trademarks from his cigars and marketing materials. His cigars still list Maker’s Mark as an ingredient but in his countersuit, Jackson claims he was told by his attorneys that this was lawful.

While still sealed with red wax, the countersuit states that this is now straight-edged rather than dripping. The two companies have not communicated since June 2017, although they still purchase each other’s products, according to the Louisville Courier Journal.

Speaking to Biz Journals, Jackson said: “My lawyers are absolutely in shock. After a year and a half of dead silence, we get a lawsuit.”

The Bourbon industry is no stranger to legal disputes. Last year, spirits producer Heaven Hill Distilleries filed a lawsuit against the Bob Dylan-owned whiskey brand Heaven’s Door Spirits, claiming had infringed on its trademark rights. The owner of Jack Daniel’s, Brown-Forman, also filed a complaint against Texas-based Dynasty Spirits and Buffalo Bayou Distilleries for trademark infringement and dilution, false advertising and unfair competition.