Bird Fight – Wild Turkey vs. Old Crow.

Bourbon distillers have proven themselves to be a competitive bunch, and taking advantage of another’s name recognition is probably as old as commercial distilling itself.  Col. E. H. Taylor, Jr., George T. Stagg, James E. Pepper, Country Distillers, Maker’s Mark and countless others have all sued to protect their trade names or trademarks.  A few years ago, Wild Turkey (at the time using the corporate name of “Rare Breed Distilling LLC”) had to sue Jim Beam, in a case called Rare Breed Distilling LLC v. Jim Beam Brands Co., in order to stop Beam from using the slogan “Give ‘em the Bird” for its bottom-shelf Old Crow brand.

Wild Turkey had used the registered mark “The Bird is the Word” since the 1970’s, and “The Bird” was commonly used to identify Wild Turkey bourbon.  Wild Turkey claimed that the public had adopted “The Bird” as a nickname for Wild Turkey bourbon, which gave Wild Turkey trademark rights, just like Volkswagen has rights to “The Bug” even though the official name of its iconic car is “The Beetle.”  Wild Turkey used a variety of slogans in the mid-2000’s, such as “The only time to give a biker the Bird,” “Give them the Bird,” “Give ‘em the Bird,” and “Shoot the Bird.”

Exhibit B to Wild Turkey’s Complaint (2006 promotion).

Exhibit D to Wild Turkey’s Complaint (2007 promotion).

Despite this established use – and despite Old Crow never having been previously referred to as “the Bird” – in March 2010 Beam applied to register the trademark “Give ‘em the Bird.”   Beam also rolled out a new, edgy branding campaign for Old Crow using this slogan:

Exhibit G to Wild Turkey’s Complaint (2011 website home page).

Of course, “Old Crow” doesn’t have anything to do with a bird.  Instead, its namesake is none other than Dr. James Crow, the Scottish immigrant who developed and perfected the sour mash method of distilling bourbon at the Old Oscar Pepper Distillery (now Labrot & Graham / Woodford Reserve).  From the 1830’s through his death in 1855, the Old Oscar Pepper Distillery was renowned for Dr. Crow’s bourbon, which eventually became known as “Old Crow,” and which continued in production after 1855 by W. F. Mitchell (who had worked with and then succeeded Dr. Crow as distiller), and beyond.

While Old Crow enjoyed high praise in the past, it has since transitioned to the bottom shelf, and reportedly is not even the same recipe as used by Dr. Crow.  Still, as the press release from Beam’s marketing firm explained, Beam wanted to showcase the rich heritage of Old Crow along with “a touch of outlaw spirit” in the “rough and tumble market for bourbon whiskey.”  It’s unclear whether the marketing company knew that Wild Turkey had already been using the prized line.

Somehow, Wild Turkey missed Beam’s application to register the trademark and failed to object.  In October 2010, after Wild Turkey finally learned about the planned campaign for Old Crow, it sent a demand letter that failed to get any action from Beam.  In the meantime, Wild Turkey was launching a massive campaign based on the “Give ‘em the Bird” slogan, complete with Jimmy and Eddie Russell proudly extending their middle fingers for photo opportunities.  As neither company backed off, in May 2011 Wild Turkey sued Beam in federal court in Louisville.  Not to be outdone, Beam counter-sued in June 2011, asking the Court to immediately stop Wild Turkey from using its supposed trademark (which, coincidentally, was granted registration by the U.S. Patent and Trademark Office after Wild Turkey filed its lawsuit).

When the parties arrived at Court for an injunction hearing in July 2011, Beam did not have any evidence to present to support its request; just legal argument and a registered trademark.  The parties argued their respective cases, with some arguments faring better than others (for example, Beam’s attorney argued that there is a “significant” difference between “Give Them the Bird” and “Give ‘em the Bird”; the Court didn’t buy that one).

Ultimately, because the Court wanted to hear evidence, the parties rescheduled another hearing in August 2011.  Five days before the hearing, Wild Turkey filed an extensive brief supporting its position and also attached a survey which found that 24% of the participants recognized “The Bird” as a Wild Turkey name, whereas only 0.5% thought that it was associated with Old Crow.

Before the hearing was conducted, however, the parties agreed to dismiss all of their respective claims.  This agreement was probably not so much either side conceding, but instead the result of a ruling by the Distilled Spirits Council of the United States (“DISCUS”) that the “Give ‘em the Bird” campaign violated the Code of Responsible Practices applicable to advertising because its implicit vulgarity did not “reflect generally accepted contemporary standards of good taste” and because advertising “should not contain any lewd or indecent images or language.”

So ultimately, DISCUS gave both Beam and Wild Turkey the bird, and the “Give ‘em the Bird” campaign was abandoned.