See No Evil, Hear No Evil, Speak No Evil. The VAPE industry grew so rapidly, it appears it is now having to play catch up on it’s own intellectual property issues.
What had originally started as a highly requested series on How to Create a Premium e Juice Company, has now evolved into a much more heated topic over intellectual property in the vape industry. We decided to release this supplemental article to address those concerns and explore the topic more in depth.
We apologize to those readers that were expecting this to be the next in the How to Create a Premium e Juice Company series. For those premium e juice companies that are needing immediate label or web design assistance, please contact us directly at Design@VAPEMagazine.com and we’ll assist you on those designs directly. Remember right now our sponsorship program is sponsoring up to 80% of your web design costs. So reach out to us and lets get started on your new professional website.
We would also like to thank all those readers in the vaping community that took the time to comment and or send in intellectual property articles and examples that convinced us to explore this subject in much greater detail. This magazine prides itself on being transparent with our readership. After receiving the overwhelming feedback on our first article, we realized this was going to be a big article. In order to keep this article manageable, we could only included just a handful of the best examples of those comments. We will do our best to explore each of your concerns.
Background from article one in it’s series, How to Create a Premium e Juice Company.
In article one in the series, How to Create a Premium e Juice Company we presented Cuttwood as an example of the number one best selling premium e juice company. We began to explore the details of what makes many people perceive their branding as premium. We also explored our understanding of how and why one instinctively knows or can associate a brand as premium. We showed the quality of the labeling and how that same quality was carried through out the rest of the brand’s website and social channels. The main focus of that article was purely on that attention to detail and uniformity of a perceived premium branding. If you haven’t read the first surprisingly controversial article, please read the How to Create a Premium e Juice Company article before reading on.
When we released the first “How to Create a Premium e Juice Company” article, we were very excited to respond to all the feed back from the community that needed help with professional branding design. What happen next was actually a surprise. We received so much feedback in the first 48 hours, that we had to reset our form system. As we read comment after comment, it was clear there was a much larger and intensely felt issue in the industry than a relatively simple “How to” series could cover. We were quickly educated on how mature this vape industry has actually become. It is clearly self governing and demanding it’s own change. The average vaper and vaping professional is now more attuned and sensitive to the potential intellectual property mistakes made just a couple years ago and wants change before it effects the industry as a whole. Trying to keep on the “How to” theme of the original series was clearly not going to happen until this issue was addressed.
Now the multi million dollar question on 90% of our readers minds:
Did Cuttwood knowingly or unknowingly model their premium e juice similar to Jack Daniels in their startup and with “BOSS RESERVE”?
“Did Cuttwood knowingly or unknowingly model their premium e juice similar to Jack Daniels in their startup and with “BOSS RESERVE”?”
While we may never know the absolute truth, here is what our readers had to say on the subject.
COMMENT from Article One: “That article was just a How to, showing how to Steal Intellectual Property and praising them for it.”
This was not the theme behind the article and we apologize if some readers walked away with that impression. Our intention was simply to say, don’t cut corners. Put your best effort into all aspects of your branding and you’ll have the highest chance of success like Cuttwood. Both Cuttwood and Jack Daniels put obviously considerable amount of focus into all aspects of their business models and both are rewarded for that. Whether either brand is premium or not is simply a matter of personal opinion.
COMMENT: “An article that had the opportunity to decry and discourage this type of marketing, your Magazine irresponsibly ENCOURAGED it.”
Again this was not the intended theme behind the article and we sincerely apologize if some readers walked away with that impression. We will do our best in this supplemental article to explore the evidence as it was presented to us.
COMMENT: You claim in your last article that “We are not lawyers and we do not consult lawyers on every article.” You don’t need to be a lawyer to present the facts!
You are absolutely correct. While although we can not present these findings as fact, we will present those reader findings in this article and leave it to the readership to decide for themselves.
COMMENT: It’s not slanderous to show examples of what is already on the web. Response to “it is NOT the position of this magazine to make such slanderous statements.”
We view it might blur the line of slanderous to take sides and as such we won’t be taking that stance. We will only present reader presented findings and let our audience draw their own conclusions.
COMMENT: Trying to claim a lack of bias is not the stance to take here. You can take a stance. You should take a stance.
As a magazine and for the good of the industry, we need to all stay neutral, unbiased and objective. This magazine will take a stance, but only to present reader presented findings and let our audience decide for themselves.
COMMENT: This is a specific tactic being used to take down vaping companies.
If you choose to ignore IP related issues and allow them to run rampant, of course they could take down companies no matter what industry your in. That being said, many times ignoring the issue proves far more costly than actually fixing it.
COMMENT: You claim the industry wants to “see no evil, hear no evil, speak no evil”, but you fail to present any real facts yourselves, making you equally guilty of the same thing by skirting your responsibilities as a magazine.
Comments of this type were the most convincing and when combined and weighed with all the comments we received as a whole, ultimately motivated this magazine to release this supplementary article.
What Defines Infringement.
*Disclaimer* This magazine is only presenting information as it was presented by our readership and as such this is NOT legal advise. If you have any questions on any legal issues including but not limited to those discussed in this article or any other article in this magazine, you should always consult your attorney for proper legal advise.
From Wikipedia: “Infringement may occur when one party, the “infringer”, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers.
The Court there announced eight specific elements to measure likelihood of confusion:
- Strength of the mark
- Proximity of the goods
- Similarity of the marks
- Evidence of actual confusion
- Marketing channels used
- Type of goods and the degree of care likely to be exercised by the purchaser
- Defendant’s intent in selecting the mark
- Likelihood of expansion of the product lines”
Let us as a matter of industry edification, explore each of these as it pertains to our Cuttwood example.
Strength of the mark
Jack Daniel’s strength of the trademark appears to be at least 60 to over 140 years old, depending on where one measures its start in 1875 as the original Jack Daniel’s or current Brown-Forman Corporation ownership starting in 1956 to present. From Wikipedia: “Jack Daniel’s is a brand of Tennessee whiskey and the top selling American whiskey in the world. It is produced in Lynchburg, Tennessee, by the Jack Daniel Distillery, which has been owned by the Brown-Forman Corporation since 1956” .. “The brand label on the product says “Est. & Reg. in 1866″, but his biographer has cited official registration documents to assert that the business was not established until 1875.”
Jack Daniel’s product example 750 ml bottle of Jack Daniel’s Black Label Old No. 7 (Average Price $ 27 (USD) )
7,660,000 Google Search results for Jack Daniel’s.
Packaged in distinctive square bottles, a total of 11 million cases of the flagship “Black Label” product were sold in the company’s fiscal year ended April 30, 2013.
Selling a total of 11 million cases or 12 bottles per case x 11,000,000 = 132,000,000 bottles per year. Grossing an estimated $3,564,000,000 per year.
Cuttwood’s strength of the trademark is estimated to have started with its operation launch in 2013 and has grown to be arguably the top selling premium e juice of all time in its own industry.
Cuttwood’s product example 30 ml bottle of Cuttwood’s Boss Reserve (Average Price $ 24 (USD) )
534,000 Google Search results for Cuttwood.
Austin: “So we now is a ISO7 clean room certified, we are ANSO registered, and we are selling well over 300,000 bottles a month.”
Selling well over 300,000 bottles a month or 3,600,000 bottles per year. Grossing an estimated $86,400,000 per year.
Proximity of the goods
This is defined as the physical proximity of the goods in the retail marketplace. As such being of a common demographic, one could easily conclude a store that carries Jack Daniel’s would also carry Cuttwood and vice versa. But it could also be argued that because one product is nicotine and other alcohol, each product would be in completely different sections behind the counter.
Similarity of the marks
The similarity of the marks is unmistakably one of the most important factors when establishing whether a trademark is confusingly similar to another. While we would hate to hear a story of how any drunk person mistakenly took a bottle of Cuttwood for a mini bottle of Jack Daniel’s and drank the entire contents in one shot, you can not rule out the possibility. When there is an infringing level of confusion, there is always these risks. It should be noted that if there is one thing we can take away from the hundreds of premium e juice company interviews we conducted, is that all premium e juice companies insist that a premium e juice is not premium unless it passes the taste test. In other words taste good orally. The gravity of this issue is made even worse when we consider outside the scope of this particular example, with all the similar intellectual property infringement happening against the candy industry and the potential e liquid swallowing risks that confusingly similar candy branding has for the children.
Evidence of actual confusion
Evidence of actual confusion is as straight forward as it sounds. Unfortunately the shear fact that we are writing this article could be concluded as evidence. Because of this, we feel the gravity and burden in every word of this article. Ask most of our readers that took the time to comment, most will tell you when they first seen the Cuttwood label they immediately thought of the Jack Daniel’s brand. Whether they actually thought it was Jack Daniel’s or produced by Jack Daniel’s is another matter.
Marketing channels used
Marketing channels used is channels by which either brand advertises its products and could there be any confusion between the brands. In radio we believe there can be no confusion as it appears to only be a matter of visual similarity.
Type of goods and the degree of care likely to be exercised by the purchaser
It could be clearly argued that these are two different products of separate industries and as such would as a matter of opinion require little care by the purchaser or consumer to mistake one for the other at the time of purchase. Whether they actually thought it was a product produced by Jack Daniel’s is another matter.
Defendant’s intent in selecting the mark
Establishing the defendant’s intent in selecting the mark is very subjective. Did Cuttwood knowingly or unknowingly model their premium e juice similar to Jack Daniels in their startup and with “BOSS RESERVE”? This particular entry may prove very difficult to defend for Cuttwood when you consider the consensus of just our readership alone as an example. 90% of our readership believed Cuttwood had the benefit of the cool Jack Daniel’s look and demographic going for it from day one. Unfortunately that benefit may prove to be it’s curse. For the sake of industry appearance, let us all hope not!
Likelihood of expansion of the product lines
Likelihood of expansion of the product lines, is the likelihood Jack Daniel’s will make an entrance into the Premium e Liquids market. It is a matter of opinion, but one could ultimately argue that Jack Daniel’s with its experience with brewing, steeping, aging, chemistry and marketing is in a much better position to make a world leading premium e juice than any big tobacco cigarette company. This industry is not about tobacco and smoking anymore. The Premium e liquids industry may have more in common with the alcohol industry than the cigarette industry. Vapers take special care to make the distinction that vaping is so unlike cigarettes and are easily offended when similarities are drawn between them.
The truth is, the likelihood of lawsuit depends on many factors.
- How clear is the infringement?
- How likely would it be for a settlement before it ever went to trial?
- How likely would it be for a win if it ever went to trial?
- How profitable would the lawsuit be after calculating the legal fees for trial or settlement?
- How much damage was suffered by company being infringed upon?
- How good nature d is the company being infringed upon?
The Likelihood of Intellectual Property Lawsuit.
Knowing the likelihood of any legal action or its outcome, we only have history and case law to go off of.
To know the likelihood of any lawsuit over intellectual property trademark infringement, we have to explore the courtroom history of the company being infringed upon. In the case of Jack Daniel’s there is clear evidence of it’s desire to protect it’s brand identity, but sometimes with a flare for southern hospitality. The first example we would like to present is a product of similar category.
Products of similar category. The case of Jack Daniel’s Properties Inc. v. Popcorn Sutton Distilling LLC.
Jack Daniel’s sues Popcorn Sutton’s over similar-branding of its whiskey bottles and labeling.
The suit filed in Nashville wanted the Popcorn Sutton bottle withdrawn from the market. The actual lawsuit stated: “Defendants’ use of the new Popcorn Sutton’s trade dress in connection with their Tennessee white whiskey is likely to cause purchasers and prospective purchasers of the product to believe mistakenly that it is a new Tennessee white whiskey product in the Jack Daniel’s line,”
This is a very important piece of historical case evidence. Here we see how Jack Daniel’s could see likely cause for purchasers and prospective purchasers of their product line to believe mistakenly that Cuttwood’s product might be concluded as a new expansion product in the Jack Daniel’s line. This sounds straight forward on first glance, but becomes much more in depth on discovery. As a matter of opinion, it could be argued that Cuttwood was carried to success on this misconception. Additionally it could be argued that the unjustified negativity the vape industry has received, could adversely effected the Jack Daniel’s name. Conversely Cuttwood could be argued to have made it’s own success, under it’s own merit and as such any misconception actually expanded the good name and perception of Jack Daniel’s. These are only opinions of our readership and the truth and reality of the situation might be far further reaching than we realize.
Products of different category. Jack Daniel’s Cease-and-Desist Letter to Kohl’s
Jack Daniel’s issues a cease-and-desist Letter to Kohl’s for tank tops specifically targeting juniors in violation of Tennessee whiskey’s trademark.
While we see this as an additional example of Jack Daniel’s enforcing its intellectual property, this historic example goes a step further in addressing the influence branding has on minors. As we can see the burden of responsible branding is shared across and touches all industries. This particular instance once again, ended peacefully and quickly with Kohl’s removing the offending tank tops from it’s stores. What we can take away from this example is at least as far as Jack Daniel’s is concerned, good old fashion southern hospitality and responsible marketing brought about a swift conclusion to the issue.
Products of different category. Jack Daniel’s issues the nicest Cease-and-Desist to Patrick Wensink
Jack Daniel’s good old fashion southern hospitality goes viral with its world’s nicest cease and desist letter.
The ecosystem of international premium branding and social marketing has created a new global community. Jack Daniel’s is on the cutting edge with it’s awareness of this fact. While although Jack Daniel’s goes to great lengths to protect it’s trademarks and intellectual property, it does so with class and good old fashion southern hospitality. Take this example of a book titled “Broken Piano for President” By Patrick Wensink published by Lazy Fascist Press February 1, 2012, here Jack Daniel’s issued what has to be the world’s nicest cease and desist letter.
In the final outcome, Jack Daniel’s kindly allowed Patrick Wensink to continue to sell the first print copies of his book, but asked that he change the cover on the next reprint. Jack Daniel’s even went so far as to offer to pay for the new cover art in the book’s next reprint. Patrick Wensink and publisher Lazy Fascist Press graciously declined Jack Daniel’s offer to pay for the book’s next reprint cover art.
Jack Daniel’s clearly understands how small and interconnected our global commerce community has become. Everything we do in big premium business is heard and felt across the world. Jack Daniel’s knows this and cleverly uses these facts to their advantage. Issuing the world’s nicest cease and desist letter, was pure genius. Forever effecting all those individuals that read or heard of the world’s nicest cease and desist letter and impressing upon them Jack Daniel’s southern hospitality as a world leader.
In Conclusion: Did Cuttwood knowingly or unknowingly model their premium e juice similar to Jack Daniels in their startup and with “BOSS RESERVE”?
We each must draw our own conclusions from the details and facts presented in this article.
When we ultimately compare Cuttwoods similarity to Jack Daniel’s to the previous similarities presented in this article, it becomes clear there might be merit to the opinions and concerns of this industry. That being said, what was also discovered was Jack Daniel’s willingness to resolve these types of issues quickly and peacefully with great southern charm. Unless Cuttwood ultimately reveals one way or another we may never know for sure. What is known is this communities willingness to address and face the real issues facing this industry. This magazine is honored to have been in the right place at the right time to do our small part in writing and presenting this story to the industry. In the end what each of us takes away from this story should be neutral, unbiased and objective. We must each draw our own conclusions and not be afraid to voice those conclusions to the world with sincerity and a positive attitude.
The old saying is certainly true, “You can catch more flies with honey than with vinegar. It’s easier to persuade others with polite requests and a positive attitude rather than with rude demands and negativity.” Jack Daniel’s has proven this time and time again through out each of the examples mentioned in this article; a sentiment shared by this magazine.
There is a lot of outrage and passion in the vape industry over intellectual property and trademark disputes. Until now most preferred to take the stance to See No Evil, Hear No Evil, Speak No Evil. The logic being that if we draw attention to our own industries possible intellectual property and trademark disputes, we would run the risk bringing further wrath from the courts and or worse we would be seen as attacking our own.
Like it or not as one of the worlds newest premium brands, we are now a part of a much larger interconnected global commerce community and we can not continue to conduct business with our heads in the sand; continuing to sweep these types of issues under the carpet. With the appearance of so much possible intellectual property infringement, we need to take a page from Jack Daniel’s book and by staying neutral, unbiased and objective, politely suggesting to those infringing companies that it is time to acknowledge their responsibilities and make a change. Impress upon each of them that they are not being singled out, but that this is a global industry move towards responsible commerce and good intellectual property practice.
For the sake of the VAPE industry, stand and be heard. Please share and comment in the comments below your views of intellectual property infringement.