Sazerac Brands sells flavored liquor under the name DR. MCGILLICUDDY’S, Sazerac alleges that DR. MCGILLICUDDY’S is particularly popular in Massachusetts, with its “Mentholmint” flavor being the most popular shot in the Commonwealth across all distilled spirits (it also comes in Apple Pie, Butterscotch, Cherry, Coffee, Peach, Peppermint, Raw Vanilla, Root Beer and Wild Grape, for the discriminating palate). Sazerac uses a design made up of a portrait of Dr. McGillicuddy, sporting a moustache and bowtie against a sepia background, and has used this design widely on the bottles themselves, as well as in their web presence, tap handles, signs, stand up displays, and the like. A considerable amount of their marketing material emphasizes the moustache, although a number of different moustache styles are employed. Sazerac owns a registration on a design mark that depicts said doctor sitting at a small table topped with bottles of spirits, with his arm around a dog. Sazerac does not, apparently, have a registration on the actual design used on their bottles, but asserts common law rights in that design, as well as a state registration in Massachusetts.
Sazerac asserts that MS Walker recently began selling a similar product, MAURICE’S distilled spirits in “Mentholated Mint” and “Root Beer” flavors, using a confusingly similar mark of a portrait of a turn-of-the-century style man with a moustache and bowtie against a sepia background. Sazerac asserts that these similarities, along with the use of other turn-of-the-century elements, use of the design on a product bearing a possessive personal name that begins with the letter “M,” and use of an uncommon “menthol” formative flavor name, infringes on the registered design mark, on the Massachusetts registration, and on Sazerac’s common law trademark rights, and also claims dilution under M.G.L. ch. 110H § 13.