Press Release
New York, New York, February 9, 2011 -- Kenyon & Kenyon LLP won dismissal today on behalf of Jim Beam Brands Co. in a declaratory judgment action filed by Tequila Cuervo La Rojena (the maker of Jose Cuervo tequila) in the Southern District of New York. Plaintiffs Tequila Cuervo filed the action against Jim Beam seeking a declaration that certain uses of an image of a crow (the "Cuervo Bird Design"), in the trade dress and marketing for its brands of tequila do not violate Jim Beam's federal trademark rights.
Jim Beam, which had sued Cuervo in the Supreme Court of New York based on Cuervo breaching its long standing agreement with Jim Beam not to use the Cuervo Bird Design, moved for judgment on the pleadings for lack of subject matter jurisdiction. Jim Beam recently won summary judgment on liability in the breach of contract case on January 31, 2011, with the damages phase set to be tried later this year. Kenyon argued that the true dispute between the parties was the breach of contract action and that Jim Beam had provided Cuervo with a stipulation which mooted the declaratory action.
Cuervo made a number of arguments that it should still be allowed to continue this parallel action, all of which were rejected by the Court. In particular, Cuervo attempted to argue that the declaratory judgment was necessary as a defense in the breach of contract action. The Honorable Sidney H. Stein held that Cuervo could not use the declaratory judgment action to develop a potential defense in the State Action and that "Jim Beam's stipulation divests this Court of jurisdiction by eliminating the threat of suit for trademark infringement on the basis of the Accused Uses."
Jim Beam Brands Co. was represented in the case by Kenyon partners Michelle Mancino Marsh and Edward T. Colbert, as well as associates Mimi Rupp and Michelle Morris, and paralegal Phil Lum.
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Kenyon & Kenyon is consistently ranked by peers and in-house counsel as one of the top firms for intellectual property law. Since its founding in 1879, the firm has provided its worldwide clientele with litigation, prosecution, licensing and counseling services. Large and small enterprises and individuals choose Kenyon to design and implement intellectual property strategies when it matters most. The firm has offices in New York, Washington, DC, and Silicon Valley.