It’s a nuisance to put time and effort into building a reputation centered on a unique piece of trade dress only to find it copied by a competitor. Thankfully, a properly registered trade dress makes that nuisance actionable. Disaronno found itself in this position and filed suit yesterday over it’s unique trade dress – this square cap:
The suit is against Sazerac over the use of a square cap on it Di Amore liqueur. According to the complaint, since Sazerac copied the trade dress of Disaronno’s “best-selling liqueur” creating the false and misleading impression that its liqueur is the “same as or equivalent to” Disaronno’s.
Here are the two caps side-by-side:
The allegations include assertions that Sazerac uses the square cap for its entire line of Di Amore products including Amaretto, Sambuca, Quattro Orange, Raspberry, Gran Orange, and Limoncello. Disaronno claims its developed the proprietary and distinctive cap trade dress and consumer confusion will abound. More importantly, there are allegations that the trade dress infringement is a purposeful attempt to siphon away Disaronno customers.
There are some fascinating facts and assertions from the complaint that the liquor geek will find of interest:
- Since 1998, Plaintiffs have spent over $184 million marketing and advertising DISARONNO liqueur.
- Advertisements from at least as far back as 1973 and 1977 show the DISARONNO CAP.
- DI AMORE packaging was entirely generic and bore no resemblance to Plaintiffs’ distinctive trade dress prior to 1994: The DI AMORE bottle was made of ordinary clear smooth glass shaped like a bottle of wine with a generic ordinarilysized screw-on cap. As DI AMORE’s ownership changed, the DI AMORE trade dress varied: inter alia, the glass bottle became dimpled and cloudy, a scroll motif and coat of arms were added to the label, and a crown-shaped gold cap replaced the generic cap.
Interestingly, and importantly from that last one, it is hard to tell when exactly Di Amore is alleged to have started using the square cap. Given that the US registration for the trade dress appears to have been issued in 2017, it’s entirely possible that this dispute has been fomenting for a time and if too much time has passed, Disaronno could be out of luck.
You can read the full complaint in ILLVA SARONNO S.P.A. et al v. SAZERAC COMPANY, INC. here.