Prohibition Distillery v. Bootleggers - Complaint

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF TENNESSEE

AT NASHVILLE
)
PROHIBITION DISTILLERY LLC, )
)
Plaintiff, ) Civil Action No.
)
vs. )
)
BOOTLEGGERS LLC, )
)
JURY TRIAL DEMANDED
Defendant. )
COMPLAINT
Plaintiff Prohibition Distillery LLC (“Prohibition”), for its Complaint against Defendant
Bootleggers LLC (“Defendant”) for trademark infringement, unfair competition and false
designation of origin, unfair and deceptive trade practices, tortious interference with business
relations, fraud on the U.S. Patent and Trademark Office, and non-use of a registered mark in
commerce that Congress may regulate, pleads and alleges as follows:
PRELIMINARY STATEMENT
1. This action is brought by Prohibition under the Lanham Act, 15 U.S.C. § 1051, et
seq., the common law of the state of Tennessee, and the Tennessee Consumer Protection Act,
Tenn. Code. Ann. § 47-18-101, et seq. against Defendant, seeking permanent injunctive relief and
damages relating to Defendant’s intentional infringement and misappropriation of Prohibition’s
registered trademarks BOOTLEGGER 21, BOOTLEGGER 21 VODKA, BOOTLEGGER 21
NEW YORK VODKA, and BOOTLEGGER 21 NEW YORK (together, “Prohibition’s
BOOTLEGGER Marks” or “BOOTLEGGER Marks”) arising out of Defendant’s promotion,
advertising and sales of its infringing product(s) under the marks BOOTLEGGERS DISTILLERY
Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 1 of 30 PageID #: 1

and BOOTLEGGERS. This is also an action for declaratory judgment under 28 U.S.C. § 2201 for
the purpose of resolving an actual and justiciable controversy which now exists between the parties
within the jurisdiction of this court. Specifically, Prohibition seeks a declaration that it does not
infringe Defendant’s alleged trademark rights.
2. By this action, Prohibition seeks to enforce its registered trademark and common
law trademark rights to its BOOTLEGGER Marks, which it has been using in connection with
alcoholic beverages, distilled spirits, spirits and liqueurs in U.S. commerce since at least as early
as July 1, 2010.
3. Prohibition seeks relief arising from Defendant’s infringing use of the marks
BOOTLEGGERS DISTILLERY and BOOTLEGGERS that are likely to cause confusion with
Prohibition’s registered and incontestable BOOTLEGGER Marks.
4. Prohibition further seeks injunctive relief and damages for trademark infringement
in violation of Section 32 of the Trademark Act of the United States, 15 U.S.C. § 1114; for unfair
competition and false designation of origin in violation of Section 43(a) of the Trademark Act of
the United States, 15 U.S.C. § 1125(a); for unfair and deceptive trade practices under the
Tennessee Consumer Protection Act, Tenn. Code. Ann. § 47-18-104; and trademark infringement
and tortious interference with business relations under Tennessee Common law. Prohibition
further seeks cancellation of Defendant’s registered trademark based on non-use in commerce that
Congress may regulate, and fraud on the U.S. Patent and Trademark Office under 15 U.S.C. §
1119, 1120, and 1127.
THE PARTIES
5. Prohibition is a New York limited liability company, with a place of business at 10
Union Street, Roscoe, New York 12776. Prohibition is the owner of all right, title and interest to

its BOOTLEGGER Marks as described herein. Prohibition has been using its marks continuously
in commerce that Congress may regulate since at least as early as July 1, 2010.
6. Defendant is a limited liability company organized under the laws of the state of
Tennessee.
JURISDICTION & VENUE
7. This court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 (Lanham
Act), 28 U.S.C. § 1331 (federal question), 28 U.S.C. § 1338 (patent, trademark and copyright), 28
U.S.C. § 1367 (supplemental jurisdiction), and 28 U.S.C. § 2201 (declaratory judgment).
8. This Court has personal jurisdiction over Defendant because Defendant is
incorporated in, and has its principal place of business in, Tennessee.
9. Venue is proper in this district pursuant to 28 U.S.C. § 1391.
FACTS
Background on Prohibition and Prohibition’s BOOTLEGGER Marks
10. Prohibition is an award-winning, nationally recognized, craft distillery and maker
of high quality vodka, gin, bourbon, and other spirits, which it creates, develops, manufactures,
advertises, markets, and sells under its BOOTLEGGER Marks, and has sold continuously in
commerce since July 1, 2010. Prohibition is among the most innovative and creative companies
selling alcoholic beverages, distilled spirits, spirits and liqueurs, and related products and services
today.
11. Prohibition has invested significant time and money to create, develop, advertise,
market, and sell its products under its BOOTLEGGER Marks.
12. Prohibition owns all right, title, and interest in and to the BOOTLEGGER Marks,
the incontestable federal trademark registrations for which are indicated below:

MARK REG. NO. GOODS CLASS FIRST FILING REG. SEC. 15
USE DATE DATE FILING
BOOTLEGGER 21 4392595 Alcoholic beverages 33 July 1, March 1, August 27, August 25,
except beers and 2010 2010 2013 2019
wines
BOOTLEGGER 21 4326660 Alcoholic beverages 33 July 1, Nov. 3, April 30, April 30,
VODKA except beers; 2010 2011 2013 2019
Distilled Spirits;
Spirits and liqueurs
BOOTLEGGER 21 4284778 Alcoholic beverages 33 July 1, Nov. 3, February 5, February 5,
NEW YORK except beers; 2010 2011 2013 2019
Distilled Spirits;
BOOTLEGGER 21 4284779 Alcoholic beverages 33 July 1, Nov. 3, February 5, February 5,
NEW YORK except beers; 2010 2011 2013 2019
VODKA & Design Distilled Spirits;
A true and correct copy of the trademark registrations are attached hereto as Exhibit A. Each of
the registrations shown in Exhibit A are valid and subsisting, and are prima facie or conclusive
evidence of Prohibition’s exclusive right to use said marks in commerce on the goods specified in
each registration. Further, the registrations shown in Exhibit A are incontestable.
13. Prohibition is also the owner of common law rights to the same marks identified in
Paragraph 12 dating back to at least as early as July 1, 2010.
14. Prohibition has also secured design patent protection for its distinctive floral bottle
design under U.S. Design Patent No. D677,577.
15. Since at least as early as July 1, 2010, Prohibition has been using, in commerce that
Congress may regulate, its BOOTLEGGER Marks in connection with its high-quality, award-
winning alcoholic beverages, distilled spirits, spirits and liqueurs, all made in its own distillery.
Examples of Prohibition’s BOOTLEGGER Marks used in connection with its products on
packaging, in retail stores, and online, are shown below.

16. Prohibition’s products are available through retail stores throughout the United
States, including in Tennessee.
17. In Tennessee specifically, Prohibition has been using, in commerce that Congress
may regulate, its BOOTLEGGER Marks in connection with alcoholic beverages, distilled spirits,
spirits and liqueurs since at least as early as October 14, 2011.

18. Prohibition has naturally and systematically expanded both the geographic
footprint for the distribution of its goods, and the breadth of its product line since 2010.
19. Prohibition has expended a substantial amount of money and effort in advertising
and promoting its BOOTLEGGER Marks.
20. As a result of Prohibition’s long-standing and continuous use of the
BOOTLEGGER Marks and its success in selling, advertising, and promoting products bearing
the marks, the BOOTLEGGER Marks have become strong and well known, and consumers have
come to know, rely upon, and recognize the BOOTLEGGER Marks as identifying quality
products emanating from Prohibition.
21. The BOOTLEGGER brand is the most publicly recognizable brand of Prohibition
in the minds of consumers—so much so in fact that consumers primarily know Plaintiff through
its BOOTLEGGER Marks. As a result of Prohibition’s substantial promotional, advertising,
publicity, and public relations activities for a decade, the BOOTLEGGER Marks have acquired
substantial goodwill and are an extremely valuable commercial asset.
22. Prohibition’s BOOTLEGGER Marks are inherently distinctive, serving to identify
and indicate the source of Prohibition’s products to the consuming public, and to distinguish
Prohibition’s products from those of others.
23. Prohibition markets its BOOTLEGGER-branded products on its website at
www.prohibitiondistillery.com, on social media, in print media, retail stores, through media
engagement and promotional events, and via its distillery, where is sells its products and offers
consumers opportunities to taste its products.
24. Prohibition and the BOOTLEGGER-branded products have also been profiled in
national media, including The New York Times (2010), The Wall Street Journal (2010), ABC

News (2013), Forbes Magazine (2017), Food and Wine Magazine (2017), Wine Enthusiast
Magazine (2019), Whiskey Advocate (2018), Travel + Leisure Magazine (2014), Popular
Mechanics (2016), Men’s Health (2019), and Departures Magazine (2019); in special interest and
regionally focused media, including CBS 2 New York (2019), Village Voice (2010), Crain’s New
York Business (2011), Hatch Magazine (2017), Valley Table (2016), Drinkhacker (2011), Edible
Manhattan Magazine (2013), and Escape Brooklyn; and also in blogs and review sites that follow
the alcohol industry, including The Whiskey Wash (2017), Social Spirit (2013), The Dizzy Fizz
(2011), I’m Bored Let’s Go (2014), The Alcohol Professor (2013), and Spirits Review.
25. Prohibition’s BOOTLEGGER products, along with its associated trademarks and
distinctive trade dress, are well-known and famous.
26. Unsolicited coverage of Prohibition’s products and trademarks demonstrates the
fame and renown of Prohibition’s BOOTLEGGER-branded products as well as the strength of
its marks.
27. Prohibition and the BOOTLEGGER-branded products have won numerous
awards, including: New York International Spirits Competition, Gold Medal, Bootleggers 21 New
York Vodka (2010); Tastings, Gold Medal, Bootlegger 21 New York Vodka, (2010); The Fifty
Best, Double Gold Medal, Bootlegger 21 New York Vodka (2014); San Francisco World Sprits
Competition, Silver Medal, Bootlegger 21 Vodka (2010); American Craft Spirits, Bronze Medals,
Bootlegger 21 New York Gin, Reserve Gin, Vodka, and Whiskey (2018); New York Wine and
Grape Foundation Governor’s Cup, Double Gold Medal, Bootlegger 21 New York Gin; New York
State Fair, Double Gold, Bootlegger 21 New York Gin (2018); and numerous others. An image
showing a sampling of Prohibition’s awards is shown below. Additionally, Travel + Leisure
Magazine recognized Prohibition’s Bootlegger 21 Vodka as one of the best craft vodkas in the

world in 2014.
28. These references to, and accolades for, Prohibition’s well-known, famous
BOOTLEGGER products were unsolicited and gratuitous. Neither Prohibition nor any person
acting on Prohibition’s behalf compensated the sources for such coverage or awards.
29. These unsolicited media references establish the notoriety, fame, exposure, and
consumer recognition of Prohibition’s BOOTLEGGER Marks and products, and are also
indicative of the national, and international, renown and fame of Prohibition’s BOOTLEGGER
Marks and products resulting from the quality of Prohibition’s products.
Defendant’s Unlawful Conduct
30. Defendant, with both constructive and, upon information and belief, actual
knowledge of Prohibition’s BOOTLEGGER Marks, began making, offering for sale, selling,
promoting, and/or advertising alcoholic beverages, distilled spirits, spirits and liqueurs—namely,

moonshine—under the alleged marks BOOTLEGGERS DISTILLERY and BOOTLEGGERS.
Examples of Defendant’s use of the BOOTLEGGERS DISTILLERY and BOOTLEGGERS
marks are shown below.
31. By Defendant’s own sworn admissions, Defendant’s use of the BOOTLEGGERS
DISTILLERY and BOOTLEGGERS marks began no earlier than 2014, well after Prohibition’s
first use of the BOOTLEGGER Marks on July 1, 2010.

knowledge of Prohibition’s BOOTLEGGER Marks, uses the alleged BOOTLEGGERS
DISTILLERY and BOOTLEGGERS marks in its web address www.bootleggerswhiskey.com, on
its website, and on social media accounts, including Facebook and Instagram.
33. Upon information and belief, Defendant sells and offers for sale under the alleged
BOOTLEGGERS DISTILLERY and BOOTLEGGERS marks alcoholic beverages, distilled
spirits, spirits and liqueurs in Tennessee, including in dozens of retail locations within this district.
Defendant also promotes its products on its website and on social media. Defendant displays the
name BOOTLEGGERS DISTILLERY and BOOTLEGGERS in its online advertising, including
on its website.
34. Upon information and belief, Defendant does not sell or offer for sale liquor
products under the BOOTLEGGERS DISTILLERY and BOOTLEGGERS marks outside of
Tennessee or in commerce that Congress may regulate.
35. Defendant’s website features a page with a map under the name “Where to Buy our
Products” indicating where consumers may buy its liquor products, which shows retail locations
only within the state of Tennessee.
36. Defendant’s liquor products—namely, moonshine—are not available for purchase
online.
37. Defendant’s use of the BOOTLEGGERS DISTILLERY and BOOTLEGGERS
marks has always been and continues to be without permission, consent, or authority of
Prohibition.
38. Upon information and belief, Defendant registered its domain name
bootleggerswhiskey.com on January 17, 2013.
39. According to the records of the Tennessee Secretary of State, Bootleggers LLC was

formed on August 22, 2013.
40. On December 16, 2014, the U.S. Patent and Trademark Office issued U.S.
Registration No. 4,657,229 for BOOTLEGGERS DISTILLERY (the “’229 Registration”) for
liquor to Defendant.
knowledge of Prohibition’s BOOTLEGGER Marks, has publicly made factually false statements
about Prohibition and Prohibition’s BOOTLEGGER Marks.
42. On January 4, 2020, Lighthouse Liquors, an independent liquor store in Athens,
New York, posted an admiring photo of Prohibition’s patented embossed floral designed bottles
containing spirits marked with Prohibition’s BOOTLEGGER Marks. In a comment responding
to the post, Defendant, using the Instagram handle @bootleggersdistillery, falsely stated:
I’m afraid to inform you . But the name Bootleggers is trade

marked and can not be used in any form of distilled spirits [sic]
A true and correct copy of the Instagram post is shown below.
43. By these knowingly false and misleading statements, Defendant has disparaged

Prohibition’s goods and sought to unfairly compete with Prohibition and eliminate and/or interfere
with Prohibition’s prospective business relationship with the consuming public through improper
means and/or with improper motive, including by making misrepresentations to potential
customers and the public about Defendant’s purported superior trademark rights in the
BOOTLEGGERS DISTILLERY and BOOTLEGGERS marks over Prohibition’s rights in the
BOOTLEGGER Marks, with the intent to cause harm to Prohibition’s reputation and with the
intent to cause Prohibition to lose business opportunities.
44. On the same day Defendant made false statements on Instagram, Defendant
continued his efforts to interfere with Prohibition’s business by sending Prohibition a cease and
desist email which stated in full:
My name is Darrell Miller I own Bootleggers Distillery. We have

been in business for six years and have the name Bootleggers
Trademarked in all alcohol Distilled Spirits . I need for you to cease
and desist from all forms of using our name in distilled spirits. Please
let me know how you want to proceed. If I do not hear from you I
will turn it over to my lawyers. Thank you and sorry for the
inconvienience. [sic]
A true and correct copy of the email is attached hereto as Exhibit B.
45. By this email, Mr. Miller conceded that Defendant’s use of the BOOTLEGGERS
DISTILLERY and BOOTLEGGERS marks began no earlier than 2014, well after Prohibition’s
first use of the BOOTLEGGER Marks on July 1, 2010—which confirms and reinforces the date
of first use Defendant alleged in its Application Serial No. 86041357.
46. By this email, Mr. Miller has demanded that Prohibition cease and desist use of
Prohibition’s BOOTLEGGER Marks in connection with distilled spirits, and accordingly has
called into question the rights of Prohibition and Defendant with respect to Prohibition’s rights to
use its BOOTLEGGER Marks. Mr. Miller’s threats have created a real and reasonable

apprehension on the part of the Prohibition that Defendant will commence litigation for trademark
infringement unless Prohibition capitulates to Defendant’s unfounded demands.
47. Despite submitting a date of first use in commerce to the U.S. Patent & Trademark
Office of August 20, 2014, despite claiming to have been “in business for six years” (e.g. since
2014), despite not forming Bootleggers LLC until August 22, 2013, and despite not registering the
bootleggerswhiskey.com domain name until January 17, 2013, Defendant nonetheless places
language on its product, labels and/or packaging for its product falsely, misleadingly, and
deceptively claiming that it was established in 2010, which is the actual year in which Prohibition
began using its BOOTLEGGER Marks in commerce. An example of Defendant’s false claim is
highlighted in its logo as shown below.
Effects of Defendant’s Unlawful Conduct on Prohibition and the Consuming Public
48. Defendant’s BOOTLEGGERS DISTILLERY and BOOTLEGGERS marks are
confusingly similar to, or are likely to cause confusion with, Prohibition’s BOOTLEGGER
Marks. The products sold by Defendant are competitive with and overlapping with the products
sold by Prohibition under its BOOTLEGGER Marks.

49. Defendant promotes its products in retail stores, over the Internet and through social
media, such as Facebook and Instagram, and sells its products in retail stores. The purchasers for
the goods of Prohibition under the BOOTLEGGER Marks are closely related to and overlapping
with the purchasers for Defendant’s goods sold under the BOOTLEGGERS DISTILLERY and
BOOTLEGGERS marks. The continued use by Defendant of the BOOTLEGGERS DISTILLERY
and BOOTLEGGERS marks on its website, in its advertising and promotional materials, and on
its products is likely to diminish the goodwill associated with Prohibition’s BOOTLEGGER
Marks.
50. The continued making of public statements that falsely designate Prohibition as the
secondary user is likely to diminish the goodwill associated with Prohibition’s BOOTLEGGER
Marks.
51. On information and belief, Defendant is deriving and will continue to derive
substantial revenue from its products provided under the BOOTLEGGERS DISTILLERY and
BOOTLEGGERS marks.
52. Defendant’s unauthorized use of the BOOTLEGGERS DISTILLERY and
BOOTLEGGERS marks and derivatives of those marks is likely to cause confusion or mistake or
to deceive consumers into believing that Defendant’s unauthorized products advertised, promoted,
and offered under the BOOTLEGGERS DISTILLERY and BOOTLEGGERS marks and
derivatives of those marks are sponsored, licensed or authorized by, or are affiliated, connected
with or otherwise associated with Prohibition, or that Prohibition’s products and services offered
under Prohibition’s BOOTLEGGER Marks are sponsored, licensed or authorized by, or
affiliated, connected, or otherwise associated with Defendant when they are not.
53. Defendant’s continued use of the BOOTLEGGERS DISTILLERY and

BOOTLEGGERS marks and derivatives of those marks is, on information and belief, with full
knowledge of the prior ownership by Prohibition of Prohibition’s BOOTLEGGER Marks and
Prohibition’s rights to use and control the use of such marks.
54. Defendant’s misleading and unsupported claim “Est. 2010” in its logo, which
appears on Defendant’s product labels, web site, and other branded products contradicts the public
statements it made to the U.S. Patent & Trademark Office and to Prohibition in its cease and desist
email.
55. Defendant’s misleading and unsupported claim “Est. 2010” creates confusion with
Prohibition’s trademarks falsely claiming it has been in business for the same length of time as
Prohibition, which it has not.
56. Defendant’s misleading and unsupported claim “Est. 2010” in its logo is also
contradicted by multiple appearances of the following language on Defendant’s web site: “Darrell
has managed to grow with his business since 2013.”
57. Defendant has acted and continues to act without regard to Prohibition’s property
rights and goodwill.
58. As a result of Defendant’s unauthorized use of the BOOTLEGGERS DISTILLERY
and BOOTLEGGERS marks and derivatives of those marks, Defendant is being unjustly enriched
at Prohibition’s expense, and Prohibition is being damaged. Defendant’s conduct unlawfully
capitalizes on the goodwill and reputation established by Prohibition through its use and promotion
of its BOOTLEGGER Marks dating back to July 1, 2010.
59. Defendant’s unauthorized use of the BOOTLEGGERS DISTILLERY and
BOOTLEGGERS marks and derivatives of those marks in association with its products has
significantly injured Prohibition’s interests. Specifically, Defendant (a) has traded upon and

threatens to further trade upon the significant and valuable goodwill in Prohibition’s
BOOTLEGGER Marks; (b) is likely to cause public confusion as to the source, sponsorship, or
affiliation of Defendant’s products; (c) has damaged and threatens to further damage Prohibition’s
significant and valuable goodwill in Prohibition’s BOOTLEGGER Marks; (d) has injured and
threatens to further injure Prohibition’s right to use Prohibition’s BOOTLEGGER Marks as the
exclusive indicia of origin of Prohibition’s alcoholic beverages, distilled spirits, spirits and liqueurs
in Tennessee and throughout the United States; (e) has lessened the capacity of Prohibition’s
BOOTLEGGER Marks to indicate that its products are sponsored by Prohibition; and (f) has
engaged in unlawful, unfair, and fraudulent business practices from which members of the public
are likely to be deceived as to the source, sponsorship, or endorsement of Defendant’s goods.
60. Unless these infringing acts by Defendant are restrained by this Court, they will
cause irreparable injury to Prohibition and to the public, for which there is no adequate remedy at
law.
Defendant’s Fraudulently Obtained & Maintained U.S. Trademark Registration
61. On August 19, 2013, Defendant filed with the U.S. Patent & Trademark Office
Application Serial No. 86041357 to register the mark BOOTLEGGERS DISTILLERY on the
Principal Register under Section 1(b) intent-to-use filing basis.
62. On October 6, 2014, Defendant filed with the U.S. Patent & Trademark Office a
Statement of Use under 15 U.S.C. § 1051(d), which also included a sworn declaration signed under
penalty of perjury by Luke Brean, counsel for Defendant, that the mark BOOTLEGGERS
DISTILLERY was “first used in commerce at least as early as 08/20/2014, and is now in use in
such commerce.”
63. Mr. Brean further swore under penalty of perjury:

[T]he applicant or the applicant’s related company or licensee is
using the mark in commerce on or in connection with all the
goods/services in the application or notice of allowance, or as
subsequently modified, and such use by the applicant's related
company or licensee inures to the benefit of the applicant….The
signatory being warned that willful false statements and the like are
punishable by fine or imprisonment, or both, under 18 U.S.C.
Section 1001, and that such willful false statements and the like may
jeopardize the validity of the application or submission or any
registration resulting therefrom, declares that all statements made of
his/her own knowledge are true and that all statements made on
information and belief are believed to be true.
64. On information and belief, such statements were false at the time they were made.
65. On information and belief, Defendant knew such statements were false at the time
they were made.
66. On information and belief, Defendant knowingly made such false statements in
order to induce the U.S. Patent & Trademark Office to issue a certificate of registration.
67. Insofar as the aforementioned false statements were knowingly made, such
statements constitute fraud on the U.S. Patent & Trademark Office.
68. On information and belief, as of August 20, 2014, Defendant was not using the
mark BOOTLEGGERS DISTILLERY in commerce that Congress may regulate in connection
with liquor.
69. On information and belief, Defendant has never made any sales of liquor products
outside of Tennessee.
70. On information and belief, Defendant either no longer uses or has never used the
BOOTLEGGERS DISTILLERY mark in connection with liquor in interstate, international, or
other commerce which Congress may regulate.
71. On information and belief, Defendant either no longer or has never shipped any
product bearing the BOOTLEGGERS DISTILLERY mark in connection with liquor in interstate,

international, or other commerce which Congress may regulate.
72. On information and belief, Defendant does not intend to resume use or begin use
of the BOOTLEGGERS DISTILLERY mark in connection with liquor in interstate, international,
or other commerce which Congress may regulate.
73. On information and belief, the mark has not been in continuous use in commerce
that Congress may regulate for a period of five years after the date of registration or currently in
use in commerce, as required by Section 15 of the Lanham Act, 15 U.S.C. § 1065.
74. On December 20, 2019, Defendant filed a Section 8 declaration of use with the for
the ’229 Registration, which also included a sworn declaration signed under penalty of perjury by
Darrell Miller, “Principal” for Defendant, that “the [BOOTLEGGERS DISTILLERY] mark is in
use in commerce on or in connection with the goods/services or to indicate membership in the
collective membership organization identified above, as evidenced by the attached specimen(s).”
75. Mr. Miller further swore under penalty of perjury:
Unless the owner has specifically claimed excusable nonuse, the

mark is in use in commerce on or in connection with the
goods/services or to indicate membership in the collective
membership organization identified above, as evidenced by the
attached specimen(s).
Unless the owner has specifically claimed excusable nonuse, the

specimen(s) shows the mark as currently used in commerce on or
in connection with the goods/services/collective membership
organization.
To the best of the signatory's knowledge, information, and belief,

formed after an inquiry reasonable under the circumstances, the
allegations and other factual contentions made above have
evidentiary support.
The signatory being warned that willful false statements and the
like are punishable by fine or imprisonment, or both, under 18
U.S.C. § 1001, and that such willful false statements and the like
may jeopardize the validity of this submission and the registration,

declares that all statements made of his/her own knowledge are
true and all statements made on information and belief are believed
to be true.
76. On information and belief, such statements were false at the time they were made.
77. On information and belief, Defendant knew such statements were false at the time
they were made.
79. On information and belief, as of December 20, 2019, Defendant was not using the
mark BOOTLEGGERS DISTILLERY in commerce the Congress may regulate in connection with
liquor.
80. On information and belief, Defendant has never made any sales of liquor products
outside of Tennessee.
81. On information and belief, Defendant either no longer uses or has never used the
BOOTLEGGERS DISTILLERY mark in connection with liquor in interstate, international, or
other commerce which Congress may regulate.
order to induce the U.S. Patent & Trademark Office to accept Defendant’s Section 8 affidavit.
84. In filing a Section 8 affidavit, Defendant committed its second act of fraud on the
U.S. Patent & Trademark Office.
85. On January 8, 2019, Defendant filed a Section 15 declaration of incontestability in
connection with the ’229 Registration, which also included a sworn declaration signed under

penalty of perjury by Darrell Miller, “Principal” for Defendant, that Defendant “has continuously
used the mark [BOOTLEGGERS DISTILLERY] in commerce for five (5) consecutive years after
the date of registration, or the date of publication under Section 12(c), and is still using the mark
in commerce on or in connection with all goods or services listed in the existing registration for
this class:Liquor [sic]….”
order to induce the U.S. Patent & Trademark Office to accept Defendant’s Section 15 affidavit.
87. In filing a Section 15 affidavit, Defendant committed its third act of fraud on the
U.S. Patent & Trademark Office.
88. For the foregoing reasons, the U.S. Patent & Trademark Office would have never
issued the ’229 Registration—or maintained the registration—but for the knowingly fraudulent
representations made by Defendant to the U.S. Patent & Trademark Office in its Sections 8 and 15
affidavits.
89. Defendant’s multiple acts of fraud on the U.S. Patent & Trademark Office warrant
cancellation of Defendant’s ’229 Registration.
90. Defendant’s non-use of its marks in commerce that Congress may regulate is
sufficient grounds—alone—to cancel the ’229 Registration.
Willful Nature of Defendant’s Conduct
91. Defendant’s acts of infringement and unfair competition complained of herein by
adopting marks confusingly similar to Prohibition’s BOOTLEGGER Marks and selling and
offering for sale of products that infringe Prohibition’s BOOTLEGGER Marks have been
deliberate, willful, intentional, and in bad faith and, since at least 2014, undertaken with full
knowledge and in conscious disregard of Prohibition’s prior rights and designed to trade on

Prohibition’s goodwill associated with its BOOTLEGGER Marks. Defendant has profited and
been unjustly enriched, and will continue to profit and be unjustly enriched, by sales and publicity
that Defendant would not otherwise have obtained but for its unlawful conduct. The alleged
excuses, justifications, and other attempts to hide and obfuscate the facts of this matter undertaken
by Defendant have been dilatory, disingenuous, and without a sound basis in fact or applicable
law. In view of the egregious nature of Defendant’s actions, this is an exceptional case as described
in Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a).
COUNT I
(Trademark Infringement Under 15 U.S.C. § 1114)
92. Prohibition repeats and realleges Paragraphs 1 through 91 of this Complaint.
93. Defendant’s acts as complained of herein are likely to cause confusion, mistake, or
deception as to origin, sponsorship, or approval and therefore constitute federal trademark
infringement in violation of 15 U.S.C. § 1114(1).
94. By reason of Defendant’s bad faith and willful infringement, Prohibition has
sustained and is entitled to recover actual and treble damages, attorneys’ fees, and the costs of this
litigation pursuant to 15 U.S.C. § 1117 and injunctive relief pursuant to 15 U.S.C. § 1116.
COUNT II
(Unfair Competition and False Designation of Origin Under 15 U.S.C. § 1125(a))
95. Prohibition repeats and realleges Paragraphs 1 through 94 of this Complaint as if
fully set forth herein.
96. Defendant’s acts as complained of herein constitute unfair competition and false
designation of origin in violation of §43(a) of the Lanham Act, 15 U.S.C. §1125(a).
97. Prohibition has sustained and is entitled to recover actual and treble damages,
attorneys’ fees, and the costs of this litigation pursuant to 15 U.S.C. § 1117 and injunctive relief

pursuant to 15 U.S.C. § 1116.
COUNT III
(Cancellation for Fraud On U.S. Patent & Trademark Office
Under 15 U.S.C. § 1119, 1120)
99. Defendant’s acts as complained of herein constitute procurement and maintenance
of a registration in the U.S. Patent & Trademark Office for the mark BOOTLEGGER
DISTILLERY by a false or fraudulent declaration or representation in writing in violation of 15
U.S.C. § 1120.
100. Defendant committed fraud in the procurement and maintenance of the ’229
Registration by knowingly, with the intent to deceive the USPTO, making material
misrepresentations that it was using the BOOTLEGGER DISTILLERY mark in commerce that
Congress may regulate in connection liquor as of August 20, 2014, continued to use the mark in
commerce, and continuously used the mark in commerce for five (5) consecutive years after the
date of registration, when in fact, no such use was taking place.
101. Issuance and maintenance of the fraudulently procured registration for the mark
BOOTLEGGER DISTILLERY has caused injury and damage to Prohibition.
102. Prohibition has sustained and is entitled to recover actual and treble damages,
attorneys’ fees, and the costs of this litigation pursuant to 15 U.S.C. § 1117, 1120 and injunctive
relief pursuant to 15 U.S.C. § 1116.
COUNT IV
(Cancellation for Non-Use Under 15 U.S.C. § 1127)

104. Defendant’s acts as complained of herein, namely non-use or discontinuance of use
of the BOOTLEGGERS DISTILLERY mark and intent not to resume or begin such use in
connection with liquor in interstate, international, or other commerce which Congress may
regulate, constitutes both (1) non-use and (2) abandonment of the mark BOOTLEGGERS
DISTILLERY pursuant to 15 U.S.C. § 1127, both of which mandate cancellation of Defendant’s
registration because Defendant has never been entitled to registration of its trademark.
105. Defendant has therefore never used and also abandoned the ’229 Registration for
BOOTLEGGERS DISTILLERY with respect to all goods, and the mark should be cancelled
because Defendant has never been entitled to registration of its trademark.
COUNT V
(Unfair and Deceptive Trade Practices Under Tennessee Consumer Protection Act, Tenn.
Code. Ann. § 47-18-101, et seq.)
107. Defendant’s acts as complained of herein constitute unfair and deceptive trade
practices affecting the conduct of trade or commerce in violation of Tennessee Consumer
Protection Act, Tenn. Code. Ann. § 47-18-104.
108. Defendant’s unlawful acts include (1) causing a likelihood of confusion or of
misunderstanding as to the source, sponsorship, approval or certification of goods or services, (2)
causing a likelihood of confusion or misunderstanding as to affiliation, connection or association
with, or certification by, another, (3) representing that goods or services have sponsorship,
approval, characteristics, ingredients, uses, benefits or quantities that they do not have, (4)
disparaging the goods, services, or business of another by false or misleading representations of
fact; (5) falsely passing off goods or services as those of another, and (6) using deceptive
representations in connection with goods or services.

109. By reason of Defendant’s bad faith and willful and knowing conduct, Prohibition
has sustained and is entitled to recover actual and treble damages, attorneys’ fees, and the costs of
this litigation pursuant to Tenn. Code. Ann. § 47-18-109(e).
COUNT VI
(Tortious Interference With Business Relations)
111. Defendant’s acts as complained of herein constitute tortious interference with
business relations.
112. Prohibition maintains a prospective relationship with consumers in Tennessee
seeking to purchase alcoholic beverages, distilled spirits, spirits and liqueurs.
113. Defendant is aware of Prohibition’s presence in the community as a creator,
developer, manufacturer, advertiser, marketer, and seller of alcoholic beverages, distilled spirits,
spirits and liqueurs under its BOOTLEGGER Marks and Prohibition’s prospective relationship
with the consuming public.
114. Defendant has intended to eliminate and/or interfere with Prohibition’s prospective
relationship with the consuming public through improper means and/or with improper motive,
including by making misrepresentations to potential customers and the public about Defendant’s
purported superior trademark rights in the BOOTLEGGERS DISTILLERY and BOOTLEGGERS
marks over Prohibition’s rights in the BOOTLEGGER Marks, causing harm to Prohibition’s
reputation and resulting in lost business opportunities.
115. The primary purpose of Defendant’s actions was to injure Prohibition.
116. By reason of Defendant’s bad faith and intentional, malicious, and reckless
conduct, Prohibition has sustained and is entitled to recover actual and punitive damages.

COUNT VII
(Common Law Trademark Infringement)
118. Defendant’s acts as complained of herein are likely to cause confusion, mistake, or
deception as to origin, sponsorship, or approval and therefore constitute trademark infringement
in violation of the common law.
119. By reason of Defendant’s bad faith and willful infringement, Prohibition has
sustained and is entitled to recover actual and punitive damages.
COUNT VIII
(Declaratory Judgment Under 28 U.S.C. § 2201)
121. Defendant’s acts as complained of herein constitute an actual case or controversy
concerning the rights of Prohibition and Defendant with respect to Prohibition’s rights to use the
BOOTLEGGER Marks.
122. Defendant has demanded that Prohibition cease and desist use of the
BOOTLEGGER Marks in connection with distilled spirits.
123. Prohibition denies that it infringes Defendant’s BOOTLEGGERS DISTILLERY
and BOOTLEGGERS mark or that Defendant has prior rights in the BOOTLEGGERS
DISTILLERY and BOOTLEGGERS marks over Prohibition.
124. Defendant’s conduct has created a real and reasonable apprehension on the part of
the Prohibition that Defendant’s will commence litigation for trademark infringement unless
Prohibition capitulates to Defendant’s unfounded demands.
125. Defendant’s demands require an immediate adjudication of the rights of the parties

before either party suffers damage.
126. Prohibition is entitled to seek declaratory judgment pursuant to 28 U.S.C. §2201
that Prohibition does not infringe any alleged trademark rights of Defendant.
PRAYER FOR RELIEF
WHEREFORE, Prohibition prays that this Court:
1. Declare and enter judgment that:
a. Defendant has infringed Prohibition’s BOOTLEGGER Marks in violation
of Section 32 of the Lanham Act, 15 U.S.C. §1114 and the common law;
b. Defendant has engaged in unfair competition and false designation of origin
in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a);
c. Defendant has engaged in unfair and deceptive trade practices affecting the
conduct of trade or commerce in violation of Tennessee Consumer Protection Act, Tenn.
Code. Ann. § 47-18-104;
d. Defendant has tortiously interfered with Prohibition’s business relations in
violation of Tennessee law;
e. Defendant has abandoned the mark covered by the ’229 Registration
pursuant to 15 U.S.C. § 1127;
f. Defendant has never used the mark covered by the ‘229 Registration in
commerce that Congress may regulate;
g. Defendant has committed fraud on the USPTO in the procurement and
maintenance of the ’229 Registration in violation of 15 U.S.C. § 1120; and
h. Prohibition does not violate Defendant’s alleged trademark rights and that
Prohibition has the right to use the BOOTLEGGER Marks in connection with alcoholic

beverages, distilled spirits, spirits and liqueurs, free from interference from Defendant, its
officers, agents, servants, employees, attorneys, successors and assigns, and all those
persons in active concert or participation with any of them;
2. Permanently enjoin Defendant, its officers, agents, servants, employees, attorneys,
successors and assigns, and all those persons in active concert or participation with any of them,
from using the BOOTLEGGERS DISTILLERY and/or BOOTLEGGERS marks, and any other
mark that is confusingly similar to the BOOTLEGGER Marks;
3. Order Defendant to transfer ownership of the domain name
www.bootleggerswhiskey.com, as well as any other domain name that incorporates the
BOOTLEGGER Marks, or any other mark that is confusingly similar to the BOOTLEGGER
Marks, to Prohibition;
4. Order Defendant, its officers, agents, servants, employees, attorneys, successors
and assigns, and all those persons in active concert or participation with any of them, to modify all
packaging and promotional material to eliminate the BOOTLEGGERS DISTILLERY and/or
BOOTLEGGERS marks, and any other mark that is confusingly similar to the BOOTLEGGER
Marks;
and assigns, and all those persons in active concert or participation with any of them, to deliver to
the Court for destruction, or show proof of destruction of, any and all labels, signs, prints,
packages, wrappers, receptacles, and advertisements, and any other materials in Defendant’s
possession or control that use the BOOTLEGGERS DISTILLERY and/or BOOTLEGGERS
marks, and any other mark that is confusingly similar to the BOOTLEGGER Marks;

and assigns, and all those persons in active concert or participation with any of them, to take all
reasonably available steps to remove the BOOTLEGGERS DISTILLERY and/or
BOOTLEGGERS marks, and any other mark that is confusingly similar to the BOOTLEGGER
Marks, as a designator of Defendant’s products from any listing in any business directory, yellow
pages, internet directory, social media, and any other listing service;
7. Permanently enjoin Defendant, its officers, agents, servants, employees, attorneys,
successors and assigns, and all those persons in active concert or participation with any of them
from:
a. Interfering with or threatening to interfere with the use of the
BOOTLEGGER Marks by Prohibition, its related companies, successors or assigns, in
connection with its or their business; and
b. Instituting or prosecuting any action placing in issue the right of Prohibition,
its related companies, successors or assigns, to register or use BOOTLEGGER Marks and
derivatives thereof in connection with alcoholic beverages, distilled spirits, spirits and
liqueurs;
8. Order Defendant to file with this Court and to serve upon Prohibition within 30
days after the entry and service on Defendant of an injunction, a report in writing and under oath
setting forth in detail the manner and form in which Defendant has complied with the injunction;
9. Award all damages as Prohibition sustained as a result of Defendant’s conduct as
complained of herein, and that said damages be trebled;
10. Order an accounting of all profits realized by Defendant resulting from its conduct
complained of herein, and that such profits by paid over to Prohibition, increased as the Court finds
to be just under the circumstances of this case;

11. Award Prohibition its costs and expenses of this action;
12. Declare that this is an exceptional case pursuant to 15 U.S.C. § 1117 and award
Prohibition its reasonable attorneys’ fees;
13. Award statutory damages pursuant to 15 U.S.C. § 1117(d);
14. Aware actual and treble damages, attorneys’ fees, and the costs of this litigation
pursuant to Tenn. Code. Ann. § 47-18-109(e).
15. Order the Commissioner of Trademarks to cancel the ’229 Registration for all
goods based any and/or all of the following:
a. Fraud on the U.S. Patent & Trademark Office in the filing of Defendant’s initial
application;
b. Fraud on the U.S. Patent & Trademark Office in the filing of Defendant’s Section
8 affidavit;
c. Fraud on the U.S. Patent & Trademark Office in the filing of Defendant’s Section
15 affidavit; and
d. Non-use of Defendant’s trademark in commerce that Congress may regulate; and
16. Grant any such other and further relief as this Court may deem just and proper.
JURY DEMAND
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Prohibition requests a trial
by jury of all issues so triable.

Respectfully submitted,
/s/ Darren M. Geliebter

Darren M. Geliebter
Eric J. Huang
Motions for Pro Hac Vice to be Filed
Lombard & Geliebter LLP
305 Broadway, 7th Floor
New York, New York 10007
(212) 520-1172 (telephone)
(646) 349-5567 (facsimile)
dgeliebter@lombardip.com
ehuang@lombardip.com
/s/ Howell O’Rear

Howell O’Rear (TN BPR #26509)
Seth M. McInteer (TN BPR #26471)
McInteer & O’Rear PLC
2801 12th Avenue South
Nashville, TN 37204
Ph. 615-724-6207
Fax 615-523-1311
www.mcolawfirm.com
howell@mcolawfirm.com
seth@mcolawfirm.com
Attorneys for Plaintiff

Prohibition Distillery LLC

Exhibit A
Case 3:20-cv-00071 Document 1-1 Filed 01/28/20 Page 1 of 9 PageID #: 31

Exhibit B

From: darrell <darrell@darrellmiller.net>
Date: January 4, 2020 at 10:41:05 PM EST
To: Brian Facquet <brian@prohibi4ondis4llery.com>
Subject: Bootleggers name in use of dis:lled spirits
My name is Darrell Miller I own Bootleggers Distillery. We have been in business for six years
and have the name Bootleggers Trademarked in all alcohol Distilled Spirits . I need for you to
cease and desist from all forms of using our name in distilled spirits. Please let me know how
you want to proceed. If I do not hear from you I will turn it over to my lawyers. Thank you and
sorry for the inconvienience.
Sent from my Verizon, Samsung Galaxy smartphone
Case 3:20-cv-00071 Document 1-2 Filed 01/28/20 Page 2 of 2 PageID #: 41 Page 1 of 1

AO 120 (Rev. 08/10)
Mail Stop 8 REPORT ON THE

TO:
Director of the U.S. Patent and Trademark Office FILING OR DETERMINATION OF AN
P.O. Box 1450 ACTION REGARDING A PATENT OR
Alexandria, VA 22313-1450 TRADEMARK
In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
filed in the U.S. District Court Middle District of Tennessee on the following
G Trademarks or G Patents. ( G the patent action involves 35 U.S.C. § 292.):
DOCKET NO. DATE FILED U.S. DISTRICT COURT

1/28/2020 Middle District of Tennessee
PLAINTIFF DEFENDANT
Prohibition Distillery LLC Bootleggers LLC
PATENT OR DATE OF PATENT

HOLDER OF PATENT OR TRADEMARK
TRADEMARK NO. OR TRADEMARK
1 4392595 8/27/2013 Prohibition Distillery LLC
In the above—entitled case, the following patent(s)/ trademark(s) have been included:
DATE INCLUDED INCLUDED BY
G
Amendment G Answer G Cross Bill G Other Pleading
PATENT OR DATE OF PATENT
HOLDER OF PATENT OR TRADEMARK
TRADEMARK NO. OR TRADEMARK
1
In the above—entitled case, the following decision has been rendered or judgement issued:
DECISION/JUDGEMENT
CLERK (BY) DEPUTY CLERK DATE
Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
Print Save As... Reset
JS 44 (Rev. 0/16) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS

Prohibition Distillery LLC Bootleggers LLC
(b) County of Residence of First Listed Plaintiff Sullivan County, NY County of Residence of First Listed Defendant Jefferson County, TN
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Lombard & Geliebter LLP
305 Broadway, 7th Floor, New York, New York 10007
(212) 520-1172
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(For Diversity Cases Only) and One Box for Defendant)
u 1 U.S. Government u 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State u 1 u 1 Incorporated or Principal Place u 4 u 4
of Business In This State
u 2 U.S. Government u 4 Diversity Citizen of Another State u 2 u 2 Incorporated and Principal Place u 5 u 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
Citizen or Subject of a u 3 u 3 Foreign Nation u 6 u 6

Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only)
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Proceeding State Court Appellate Court Reopened Another District Litigation - Litigation -
(specify) Transfer Direct File
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
Lanham Act, 15 U.S.C. §§ 1114, 1125
VI. CAUSE OF ACTION Brief description of cause:
Trademark infringement
VII. REQUESTED IN u CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. JURY DEMAND: u Yes u No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
01/28/2020 /s/ Darren M. Geliebter
FOR OFFICE USE ONLY
RECEIPT # Case 3:20-cv-00071 Document

AMOUNT 1-4 Filed 01/28/20
APPLYING IFP JUDGEPage 1 of 2 PageID #: 43
MAG. JUDGE
JS 44 Reverse (Rev. 0/16)
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44

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required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
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Prohibition Distillery v. Bootleggers - Complaint

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Prohibition Distillery v. Bootleggers - Complaint

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IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF TENNESSEE

commerce that Congress may regulate, pleads and alleges as follows:

damages relating to Defendant’s intentional infringement and misappropriation of Prohibition’s

registered trademarks BOOTLEGGER 21, BOOTLEGGER 21 VODKA, BOOTLEGGER 21

NEW YORK VODKA, and BOOTLEGGER 21 NEW YORK (together, “Prohibition’s

BOOTLEGGER Marks” or “BOOTLEGGER Marks”) arising out of Defendant’s promotion,

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 1 of 30 PageID #: 1

infringe Defendant’s alleged trademark rights.

Prohibition’s registered and incontestable BOOTLEGGER Marks.

1119, 1120, and 1127.

5. Prohibition is a New York limited liability company, with a place of business at 10

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 2 of 30 PageID #: 2

JURISDICTION & VENUE

U.S.C. § 1367 (supplemental jurisdiction), and 28 U.S.C. § 2201 (declaratory judgment).

8. This Court has personal jurisdiction over Defendant because Defendant is

9. Venue is proper in this district pursuant to 28 U.S.C. § 1391.

Background on Prohibition and Prohibition’s BOOTLEGGER Marks

10. Prohibition is an award-winning, nationally recognized, craft distillery and maker

market, and sell its products under its BOOTLEGGER Marks.

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 3 of 30 PageID #: 3

each registration. Further, the registrations shown in Exhibit A are incontestable.

Paragraph 12 dating back to at least as early as July 1, 2010.

design under U.S. Design Patent No. D677,577.

Examples of Prohibition’s BOOTLEGGER Marks used in connection with its products on

packaging, in retail stores, and online, are shown below.

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 4 of 30 PageID #: 4

States, including in Tennessee.

spirits and liqueurs since at least as early as October 14, 2011.

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 5 of 30 PageID #: 5

and promoting its BOOTLEGGER Marks.

20. As a result of Prohibition’s long-standing and continuous use of the

products emanating from Prohibition.

its BOOTLEGGER Marks. As a result of Prohibition’s substantial promotional, advertising,

substantial goodwill and are an extremely valuable commercial asset.

22. Prohibition’s BOOTLEGGER Marks are inherently distinctive, serving to identify

Prohibition’s products from those of others.

23. Prohibition markets its BOOTLEGGER-branded products on its website at

www.prohibitiondistillery.com, on social media, in print media, retail stores, through media

consumers opportunities to taste its products.

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 6 of 30 PageID #: 6

distinctive trade dress, are well-known and famous.

26. Unsolicited coverage of Prohibition’s products and trademarks demonstrates the

fame and renown of Prohibition’s BOOTLEGGER-branded products as well as the strength of

27. Prohibition and the BOOTLEGGER-branded products have won numerous

showing a sampling of Prohibition’s awards is shown below. Additionally, Travel + Leisure

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 7 of 30 PageID #: 7

Marks and products resulting from the quality of Prohibition’s products.

Defendant’s Unlawful Conduct

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 8 of 30 PageID #: 8

Examples of Defendant’s use of the BOOTLEGGERS DISTILLERY and BOOTLEGGERS

marks are shown below.

31. By Defendant’s own sworn admissions, Defendant’s use of the BOOTLEGGERS

first use of the BOOTLEGGER Marks on July 1, 2010.

Case 3:20-cv-00071 Document 1 Filed 01/28/20 Page 9 of 30 PageID #: 9

DISTILLERY and BOOTLEGGERS marks in its web address www.bootleggerswhiskey.com, on

BOOTLEGGERS DISTILLERY and BOOTLEGGERS marks alcoholic beverages, distilled

name BOOTLEGGERS DISTILLERY and BOOTLEGGERS in its online advertising, including

products under the BOOTLEGGERS DISTILLERY and BOOTLEGGERS marks outside of

Tennessee or in commerce that Congress may regulate.

only within the state of Tennessee.

36. Defendant’s liquor products—namely, moonshine—are not available for purchase

37. Defendant’s use of the BOOTLEGGERS DISTILLERY and BOOTLEGGERS

bootleggerswhiskey.com on January 17, 2013.