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Machine Gun Maker Sues Alphonse Capone Over Trademarks


Written by Adrienne Kendrick
Posted: May 4, 2013 @ 12:19 pm
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Saeilo Enterprises, Inc. (Saeilo), current maker of the Thompson machine gun, sometimes referred to as a “Tommy gun,” recently filed a lawsuit claiming trademark infringement against liquor company, Alphonse Capone Enterprises, Inc. (Capone).  At issue is the fact that Capone has been selling a new brand of vodka under the Tommy Guns name in a 19-inch bottle that is shaped like a Tommy gun.

In 1994, Kahr Arms (Kahr), a division of Saeilo Enterprises, Inc., was formed and five years later in 1999, Kahr bought Auto-Ordinance, the original manufacturer of the well-known Tommy Gun firearm. Additionally, Saeilo also owns the TOMMY GUN trademark for firearms, and the trademark has been used constantly since 1920.  The company is also the owner of a separate TOMMY GUN trademark that covers clothing.

The Complaint

The complaint, which was filed in Illinois, specifically alleges that Capone, an Illinois corporation, did not have authorization to use the Tommy Gun trademarks on alcoholic beverages that carry a reproduction of the Tommy Gun marks. Additionally, Saeilo claims that Capone’s infringement not only violates federal trademark law, but also Illinois state law and common law.

Saeilo’s causes of action are plentiful, ranging from federal trademark infringement and dilution, to false designation of origin or sponsorship, to trade dress infringement under the Lanham Act. Saeilo also brought claims under Illinois’ Trademark Registration and Protection Act, as well as the Illinois Deceptive Trade Practices Act.

Federal Trademark Infringement

Count 1 claims that Capone has “used in commerce, and in connection with the sale of goods, a reproduction, counterfeit, copy or colorable imitation of the Tommy Gun marks” and has applied those marks to various signs, labels, packaging and ads that were intended to be used in commerce. Additionally, Saeilo claims that such unauthorized use of the marks by Capone is likely to confuse or deceive regular Tommy Gun customers. Saeilo goes on to claim that Capone’s infringement and unlawful use of the Tommy Gun marks “jeopardizes the goodwill symbolized by the Tommy Gun marks causing serious and irreparable injury to Saeilo” and since there is not a sufficient remedy at law, Saeilo seeks a permanent injunction against the liquor company in order to prevent further infringement.

Trademark Dilution

Generally speaking, trademark dilution takes place when a person or a company uses a famous mark in a way that taints or blurs the mark, regardless of whether or not it would lead to customer confusion. That said, Saeilo states that given the number of years that the Tommy Gun marks have been used, they have become distinctive and famous, such that they are widely recognized by the general public, and Capone’s unlawful use of the marks in commerce has diluted the distinctive nature of the famous marks.  Saeilo further claims that the liquor company’s use of the Tommy Gun marks has “weakened the unique association of the marks with Saeilo, as owner of the marks.”  Once again, Saeilo seeks a permanent injunction to prevent further infringement and the company also seeks actual and treble damages, as well as the cost of the lawsuit.

False Designation of Origin or Sponsorship

Saeilo further claims that Capone’s unauthorized use of the Tommy Gun marks is likely to cause mistake or confusion in the minds of consumers as to the connection or association of Capone with Saeilo, or as to “the origin, sponsorship or approval” of the liquor company’s goods by Saeilo.  Accordingly, Saeilo alleges that Capone’s actions violate the Lanham Act in that they provide misleading or false descriptions, as well as false designations of the origin of the company’s goods.  No surprise here–Saeilo seeks a permanent injunction, as well as damages.

Trade Dress Infringement

Trade dress refers to the physical appearance of a product, including things such as shape, size, design, and color. In order to successfully win a claim of trade dress infringement, a company must prove that its product has a distinguishing appearance because trade dress won’t be shielded from infringement unless it is distinctive, extraordinary or widely recognized by the general public.  Goods that are packaged in a standard or generic way generally won’t get legal protection under the trade dress laws.

As owner of the trade dress rights in the design of the Thompson submachine gun or “Tommy Gun,” Saeilo claimed that Capone’s unlawful use of the Tommy Gun trade dress was likely to cause “confusion or mistake and/or is likely to deceive consumers as to the affiliation, connection of association of [Capone] with Saeilo,” and of course, Saeilo seeks a permanent injunction and damages.

Common Law Trademark Infringement

Saeilo claims exclusivity when it comes to using the Tommy Gun marks or any similar marks in association with the sale of firearms and related goods. Because of Saeilo’s ongoing sale of such items, the Tommy Gun marks have become instantly recognizable by the public and Saeilo is identified in the public’s mind as the manufacturer of the products and services to which the Tommy Gun marks have been applied.

That said, Saeilo claims that Capone’s use of the Tommy Gun marks constitutes both trademark and willful infringement under the common law of the state of Illinois. Given the probability of confusion among its customers, Saeilo seeks a permanent injunction and damages.

The Remaining Counts and Relief Sought

The last five counts concern unfair competition under Illinois’ common law, infringement under the Illinois Trademark Registration and Protection Act, violation of Illinois’ Deceptive Trade Practices Act, and two petitions seeking the cancellation of Federal trademark registrations on the basis of fraud and abandonment.

Given all of the imitating, copying, diluting and trade dress infringing that is claimed by Saeilo, it wants Capone to surrender to them all goods that carry the Tommy Gun mark or anything even remotely close to the mark, and it wants Capone to recall any and all items that have previously been sold and distributed with the Tommy Gun marks.

This isn’t the first time that Saeilo has sued a business in an effort to protect the Tommy Gun brand and it might not be the last.


About the Author

Adrienne Kendrick holds a BA in English from the University of Maryland, as well as a JD from John Marshall Law School. She also completed the MBA program (with an emphasis in Project Management) at Keller Graduate School of Management. Ms. Kendrick has been a professional legal writer and editor for almost 15 years, and she not only enjoys writing about topics related to intellectual property, but she also has an interest in the areas of Immigration law, Employment law, and Criminal law.

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