Globefill Incorporated vs Elements Spirits Inc Case Facts
Globefill Incorporated manufactures a high end vodka whose packaging is a crystal skull, called Crystal Head. The trade dress is non functional, costs more to produce, and is evocative of Meso-American culture and the Day of the Dead imagery and the ethos of rebirth. Since 2008, the skull shape was the only liquor sold on the market with this distinctive trade dress. Globefill partnered with actor Dan Aykroyd and The House of Blues in promoting this brand of vodka and the actor appeared at various retail locations, tradeshows, and House of Blues locations to promote the Crystal Head brand. This promotion amounted to the first release of the spirit selling out in 30 days, 535,000 hits on the website, and Adams Beverage Media cited them as a “brand to watch.”
Elements Spirits sells a tequila, Kah, in a similar trade dress, of a Meso-American inspired painted skull with a top poor, and are not affiliated, approved, or licensed by Globefill Inc. Kah Tequila also relies on Meso American Day of the Dead themes and rebirth in its marketing. While there were no sales at the time of this case, the COO mentioned in a press release that this tequila would easily be seen in a House of Blues or a Mexican Grandmother’s kitchen.
Issues and Venue
Plaintiff Globefill brought a complaint in the United States District Court, Central District of California against defendant Elements Spirits Co alleging unfair competition and false designation of origin in the nature of trade dress infringement in violation of the Lanham act. Globefill claims its packaging is distinctive and non functional, and that its packaging, marketing, advertising and promotional strategy are confusingly similar to the public and consumers. Additionally, the references in marketing to the same Meso-American cultural themes and use of the House of Blues reference by their COO amount to false designation of origin and compound likelihood of confusion further.
MMR Testifying Expert and Survey Design Strategy
Baker and Hostetler retained expert witness Dr. Bruce Isaacson, President of MMR Strategy Group, to determine the likelihood of confusion in trade dress between Crystal Head Vodka and Kah Tequila. Dr. Isaacson conducted an awareness survey first to determine whether the everready format would be appropriate to measure likelihood of confusion.
Whether a tequila or vodka consumer could be confused as to the association of Kah to Crystal Head or of the type of spirit were measured in a lineup format to simulate marketplace conditions. Visits were conducted at a number of retailers in the areas where the products would be sold and criteria for respondent included those who regularly purchase tequila, who would consider spending $30 or more on a 750 ml bottle, and they do not work in an occupation that would give them unusual knowledge. Additionally, gender and region quotas that correspond with spirit consumption were used.
In order to determine whether customers or future customers were aware of the Crystal Head vodka, Dr. Isaacson conducted an awareness survey of premium vodka drinkers. The survey measured whether respondents were aware of the premium vodka, by looking at the shape of the bottle. Respondents were qualified by age, their likelihood to purchase premium vodka in the next six months, and whether they would purchase a bottle of vodka over $30 for 750ml. Absolut and Grey Goose bottles along with Crystal Head were used with labels blurred. 93% of respondents identified Absolute, 85% identified Grey Goose, and 46% said they had seen Crystal Head before, but less that 5% could correctly identify the name.
Likelihood of Confusion Survey
The confusion survey constructed replicated a retail scenario where a consumer sees both bottles alongside control bottles of spirits. Controls were used to measure design elements in trade dress of Kah’s bottles. The survey used a mall-intercept format where paper and pencil screeners located consumers at random, in person, since the spirits are sold in person. Respondents were qualified by age, their likelihood to purchase premium vodka in the next six months, and whether they would purchase a bottle of tequila over $30 for 750ml. Respondents were interviewed by professionals and submitted their questionnaires online. The measured level of confusion between Kah and Crystal Head were either 56 or 59%, depending method, whereas the confusion between other tequilas was only 12%.
Dr. Bruce Isaacson reported that the likelihood of confusion is significant among tequila drinkers and vodka drinkers, due to proximity in retail locations and relative consumer knowledge of the brands.