Many years ago there was this young entrepreneur who invested his life savings into a start-up cigarette company under the brand name “Death” Cigarettes. His concept was as to provide full disclosure about the hazards of smoking and his packaging consisted of the traditional pirate’s skull and crossbones with a warning that if you smoke any cigarettes you are going to die. He marketed his cigarettes in head shops toward the young underground punk rock market. His position was if you are going to smoke, at least Death Cigarettes did not contain all the additives of the other more mainstream brands. He obtained a federal trademark registration of the name “Death” on the category of cigarettes.
A company called Black Death sold vodka and various spirits. Black Death had a federal trademark registered for alcohol, a different category of goods than cigarettes. Black Death’s trademark was issued before Death’s trademark issued.
Black Death decided it wanted to expand into selling cigarettes after Death Cigarette was was already in the market. Litigation followed and the issue was whether alcohol was sufficiently related to cigarettes such that it was a natural expansion of Black Death’s product line.
The court held that both had federal registrations in different categories of goods but that Black Death obtained its registration of Black Death in alcohol before Death obtained its registration in cigarettes. The court also found that alcohol and cigarettes are sufficiently related and sold through the same marketing channels. The court felt there was a likelihood that consumers may be confused that Death’s cigarettes were related to or sponsored by Black Death.
The court ordered Death to destroy all its cigarettes. Death was not even allowed to ship its cigarettes to England where it developed a market because that would require Death to ship infringing goods through the navigable waters of the United States.
Death Cigarettes was out of business and the founder lost his entire investment a very harsh result and a lesson for those who do not take trademark issues seriously.
Located in Los Angeles, California, Robert G. Klein, Esq. is a Los Angeles trademark infringement attorney who concentrates on business litigation. He emphasizes on trademark infringement, unfair competition and trade secret litigation. Los Angeles trademark infringement lawyer Robert G. Klein has acted as lead counsel in approximately 60 trials. He has successfully obtained many multi-million dollar jury verdicts. Many of Mr. Klein’s court decisions have been published as case authority and he has appeared before the United States Supreme Court for oral argument. Mr. Klein has also published “Consumer List: Trade Secret or Fair Game?”, which is an article published in the Los Angeles Lawyer Magazine. Los Angeles trademark infringement attorney Robert G. Klein can be reached at (323) 653-3900 ext. 110.