On Tuesday, Vampire Family Brands, LLC ("VFB") sued HEB Grocery Company, LP ("HEB") in federal court in Texas, alleging that the grocery chain is infringing VFB's rights in the term VAMPIRE for canned alcoholic beverages. As this complaint includes all of my favorite blog topics (alcohol, corny beverage names, and trademark infringement allegations), I couldn't resist writing about it for your reading enjoyment. VFB has been marketing wine, alcoholic beverages, olive oil, vinegar, chocolate, and tacos (yes, tacos) under the marks VAMPIRE, DRACULA, VAMPYRE, etc. for years. VFB has also been selling a canned gourmet Bloody Mary cocktail since 2017 under the VAMPIRE name.
Consequently, VFB was not thrilled when it learned that much beloved Texas supermarket chain HEB had begun selling a canned Paloma-inspired grapefruit cocktail under the name VAMPIRO.
VFB's complaint alleges that consumers encountering HEB's use of the Spanish equivalent of VAMPIRE for a canned alcoholic beverage are likely to be confused as to whether that beverage is sponsored by or otherwise associated with VFB. But VFB doesn't stop there. It also alleges that HEB's actions constitute dilution by tarnishment. There's a lot to unpack in that allegation.
Dilution by tarnishment alleges that the reputation of a famous mark is being harmed by its association with a similar mark being used on unsavory or inferior products. VFB alleges that its mark is famous because, inter alia, it has "appeared on The View, Anderson Cooper, CNN Headline News, Entertainment tonight, MTV's Viva La Bam, The Food Channel, A & E, and [has] been written up in widely circulated magazines such as Star Magazine, Shape, Maxim, InStyle, Elle, Spin, Rolling Stone, Marie Claire, Cosmo Girl, The Wine Enthusiast, and in regional newspapers such as the LA Times, the NY Times, the Houston Chronicle, and others." Having never heard of VFB's VAMPIRE marks myself, I'm curious to see if this case gets to discovery and what kind of evidence VFB produces on this point. So that's the fame part. What about reputational harm? VFB says that, while its Bloody Mary cocktail is a "gourmet" product made with real tomatoes, HEB's grapefruit cocktail does not list any citrus fruits in its ingredient list. And, while the can says it's made with 100% agave, agave is not in the ingredient list either. Instead, the ingredient list says that the cocktail is made with "natural flavors." VFB alleges that this lack of "high quality" ingredients makes HEB's cocktail inferior to VFB's, and thus tarnishes VFB's VAMPIRE mark through its use of a similar mark. Perhaps the most interesting part of this complaint, though, is that VFB is demanding a jury trial. In Texas. Against a beloved Texas super-market chain. If it's not readily apparent to you why that raises a flag, let's just say Texas juries have shown a penchant to protect their own when it comes to trademark infringement trials.
Originally published by Frankfurt Kurnit, August 2020
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