MANHATTAN (CN) – After more than 10 years of litigation, Jim Beam Brands agreed not to pursue trademark actions against Tequila Cuervo La Rojena for using a crow’s image on liquor bottles, according to a recent District Court opinion. Jim Beam still seeks royalties over the bird, however, in state court, the ruling states.
In the 8-page opinion filed on Tuesday, U.S. District Judge Sidney Stein wrote that the Cuervo crow assumes a “regal posture,” and it has weathered more than a decade of legal squabbling with Jim Beam’s “quartet of trademarks depicting crows.”
Cuervo filed a lawsuit last year seeking a judgment that its crow does not infringe on Jim Beam’s trademarks.
On Aug. 6, Jim Beam stipulated that it would no longer sue Jose Cuervo over the bird.
“Via a stipulation signed by its counsel, Jim Beam agrees to release any claims for ‘trademark infringement, dilution, or unfair competition under the Lanham Act or any state law, other than a breach of contract claim, based on Cuervo’s’ past, current and continued use in United States commerce ‘of a design of a crow, raven or similar bird, disclosed to Jim Beam and at issue’ in the pending New York contract action,” Stein wrote.
Jim Beam said that the stipulation made Cuervo’s declaratory judgment suit moot.
Cuervo argued, however, that Jim Beam’s stipulation was inadequate because it lacked specific reference to “the accused uses” of Jim Beam’s trademarks, according to the opinion.
“There is no requirement, however, that a stipulation not to sue [should] contain such a concession,” Stein wrote.
Although Jim Beam withdrew its trademark violation claims, the company is still seeking royalties in a state action.
Cuervo sought the opportunity to “prove there has been no trademark infringement” in defending that action for royalties, according to the opinion.
Stein rejected that argument, writing that a federal jurisdiction is “not the proper vehicle” for Cuervo to debate the merits of a defense in a state case.
“As this court previously explained, the state action between Cuervo and Jim Beam is a state law breach of contract dispute, pure and simple,” Stein wrote.