James Burrough Limited v. Beef/Eater Restaurants, Inc.

• Decision Date: 24 May 1967
• Docket Number: Civ. A. No. 10324.
• Citation: 272 F. Supp. 489
• Parties: JAMES BURROUGH LIMITED and Kobrand Corporation, Plaintiffs, v. BEEF/EATER RESTAURANTS, INC., d/b/a Beefeaters and Beefeater Restaurants, Defendant.
• Court: U.S. District Court — Northern District of Georgia

272 F. Supp. 489

JAMES BURROUGH LIMITED and Kobrand Corporation, Plaintiffs, v. BEEF/EATER RESTAURANTS, INC., d/b/a Beefeaters and Beefeater Restaurants, Defendant.

Civ. A. No. 10324.

United States District Court N. D. Georgia, Atlanta Division.

May 24, 1967.

King & Spalding, Atlanta, Ga., for plaintiff, Lauterstein & Lauterstein, New York City, of counsel.

Alvin N. Siegel, Atlanta, Ga., for defendants.

LEWIS R. MORGAN, Chief Judge.

The plaintiffs in this action have brought suit under the Lanham Trademark Act against the defendant for alleged infringement of a registered trademark and trade name of the plaintiff. Such plaintiffs seek to enjoin the use of the name "Beefeater" by the defendant and to recover exemplary damages for the alleged infringement.

The case is presently before the Court on a motion for summary judgment filed pursuant to Rule 56 of the Federal Rules of Civil Procedure. The facts from which the instant action arose are relatively simple. The plaintiffs produce and distribute a well-known gin under the registered name of "Beefeater Gin" and with the "Beefeater" trademark. The defendant operates several restaurants under the name of "Beefeaters" and "Beef/Eaters", and it prominently displays the yeoman Beefeater at its restaurants and its advertising.

As this Court stated in the case of HMH Publishing Company v. Turner, 222 F.Supp. 145 (D.C.1963):

"The basic protection of a trademark is the right to use a name identified with a particular operation, program or product. The more general the public acceptance of a particular name, whether it be generic, descriptive or secondary, as the identity of a product, the stronger the trade-mark protection * * *." (citations omitted)

The reputation of the term "Beefeater" and the public acceptance and cognizance of the name and trademark has been noted judicially in previous decisions. E. g. James Burrough, Ltd. v. Ferrara, 8 Misc.2d 819, 169 N.Y.S.2d 93 (1957). In its opinion in that case, the Court noted:

"The evidence abundantly established that the word Beefeater has definitely acquired a special or secondary meaning, and is identified in the public mind with the plaintiff's product. It is useless to discuss the historical origin of the word and its divers meanings. It is, of course, a familiar fact that for centuries the term Beefeater has been applied to the yeomen of the guard stationed at the Tower of London."

The above case and language quoted are not binding precedent on this Court, nor are they noted as such; however, both the holding and the reasoning represent a succinct statement which coincides with the position of this Court. Thus, the Court is of the opinion that the plaintiff's motion for summary judgment must be granted, as there is no substantial question of fact or law which precludes a judgment in favor of the plaintiffs.

The Court adopts the following Findings of Fact and Conclusions of Law.

FINDINGS OF FACT

1. Plaintiffs are citizens of the State of New York and Great Britain. The defendant is incorporated under the laws of the State of Georgia and doing business in the City of Atlanta, Georgia.

2. This is a suit for infringement of a registered United States trademark

and trade name in which jurisdiction is derived from the trademark laws of the United States, more particularly upon 28 U.S.C.A. § 1338 (1958) and 63 Stat. 107 (1949), 15 U.S.C. § 1051 et seq. and § 1121 (1964), and derived further from the parties being citizens of different states and of a foreign state, and the matter in controversy exceeding $10,000.00 exclusive of interest and costs. Venue is founded on 28 U.S.C. § 1391(c) (1958).

3. Plaintiff James Burrough Limited, hereinafter referred to as "Burrough", is a corporation duly organized and existing under the laws of England and maintains its principal place of business in London, England.

4. Plaintiff Kobrand Corporation, hereinafter referred to as "Kobrand", is a corporation duly organized and existing under the laws of the State of New York. Its principal place of business is at 134 East 40th Street, New York, New York.

5. Burrough suceeds to a family partnership established in 1820 by James Burrough. Since 1820, the family partnership and its successor corporation have been continually engaged in the distillation of high quality gin and liquors and the making of fine British wines in England. The business, which has been carried on to this day by the descendants of James Burrough, was incorporated in 1898 as a private limited liability company under the laws of England.

6. Prior to 1820, the name "Beefeater" had not been used for a gin. However, continually since 1820 James Burrough Limited and its predecessor have distilled a high quality London dry gin and have adopted and continually used the trademark and trade name "Beefeater" to identify their gin product. Since 1909 Beefeater Gin has been imported and sold by distributors in the United States and its sales are worldwide, including extensive sales in the State of Georgia, the City of Atlanta and vicinity thereof.

7. Trademarks pertaining to "Beefeater" Gin, including the name "Beefeater" as a trademark, were duly registered in the United States Patent Office in the name of plaintiff James Burrough Limited under the following numbers and on or about the following dates:

                Registration
                  Number                 Date
                  308,053            November 21, 1933
                  678,610            May 12, 1959
                  678,608            May 12, 1959
                

Plaintiff James Burrough Limited ever since has been and now is the owner of the trademarks and the said registrations thereof.

8. Since 1944, plaintiff Kobrand Corporation has been continually engaged in the importation and wholesale distribution of wines and spirits. In 1946 plaintiff Kobrand Corporation was appointed by plaintiff James Burrough Limited as the exclusive importer and distributors of Beefeater Gin throughout the United States. Plaintiff Kobrand Corporation is authorized by plaintiff James Burrough Limited, in connection with the importation and sale of Beefeater Gin, to use, promote and publish the trademark and trade name "Beefeater".

9. Beefeater Gin has been produced by plaintiff James Burrough Limited and its predecessor with great skill and care. James Burrough Limited has also expended large sums of money to maintain the uniformly high quality of its product through careful selection of the finest ingredients, continuous testing and the use of the most modern equipment and scientific methods of distillation. The result of this is that the sales of Beefeater Gin have grown to such an extent that it is now regarded as one of the foremost gin products in the world.

10. The trademark and trade name "Beefeater" have been and are continually being applied by James Burrough Limited to the gin produced by it. Said trademark and trade name are printed upon the bottles on which the product is sold and upon the cartons and packages in which the bottles are contained. More-ever, the trademark and trade name "Beefeater" are used in advertising and in other literature of plaintiffs James Burrough Limited and Kobrand Corporation in connection with the distribution and sale of Beefeater Gin.

11. Kobrand Corporation, itself and through distributors, distributes Beefeater Gin wholesale to restaurants, cafes, bars and liquor stores throughout the United States. Since 1946, when Kobrand Corporation first commenced importation of Beefeater Gin, its sales of that product have grown phenomenally.

12. Since 1946 plaintiff Kobrand Corporation and its distributors have expended more than $11,000,000 in advertising, publicizing and promoting the sale of Beefeater Gin throughout the United States. Beefeater has been regularly and extensively advertised by plaintiff Kobrand Corporation in magazines having a national distribution, such as the following:

The New Yorker Esquire Holiday Sports Illustrated Gourmet Time Playboy Show

There has also been advertising in the following newspapers having a national distribution:

Wall Street Journal The New York Times New York Herald-Tribune

All of the aforesaid magazines and newspapers have a national circulation which includes the State of Georgia, City of Atlanta and vicinity thereof. Beefeater Gin is also advertised extensively in local publications such as the Atlanta Journal, the Atlanta Constitution, the Savannah Evening Press, the Albany Herald, the Brunswick News, and the Columbus Ledger Inquirer. This combination of national and local advertising has resulted in a consistent exposure of the trademark and trade name Beefeater to residents of Georgia and in identification with the name Beefeater with Beefeater Gin.

13. Beefeater has become the leading English gin sold in the United States and outsells all other imported gins by a very substantial margin. In 1960 the approximate retail value of Beefeater Gin sold in the United States was $25,920,000. In 1966 the approximate retail value of Beefeater Gin sold in the United States was $57,000,000. During the period 1960-1966, the aggregate retail value of Beefeater Gin sold in the United States exceeded $290,000,000. In 1966 the approximate retail value of Beefeater Gin sold in the State of Georgia exceeded three-quarters of a million dollars. Sales of Beefeater Gin in Georgia for the period December 31, 1964, through September 15, 1966, exceeded 14,900 cases having a retail value in excess of $1,150,000. For the period May 1955 through September 15, 1966, over 45,000 cases of Beefeater Gin were distributed in the State of Georgia.

14. As a consequence of the described diligent and long-continued efforts in producing and selling such gin product of the highest quality, including the extensive advertising and promotion thereof, plaintiffs James Burrough Limited and Kobrand Corporation have acquired a valuable good will among restaurateurs, owners of bars, retailers of liquors, and the general public...