A common word on the labels of two spirit brands has spurred what could become a pricey trademark dispute.
Last month, Topa Spirits, which distills and sells Peruvian pisco brand Piscología, filed a complaint in federal court against Mezcal de Amor alleging a trademark infringement over the use of a “Logia” mark on one of its mezcal brands. Mezcal Amarás Logia is one of three lines under the Mezcal de Amor umbrella, including Mezcal Amarás and Mezcal Verde, all of which are imported and distributed by Suntory Spirits.
The complaint, which was filed with the U.S. District Court for the Southern District of Texas on April 12th, has now set off what could be an uphill legal battle for Mezcal de Amor and a financial burden for both companies. The next move is due from Mezcal de Amor, which has a few months to answer the complaint or file a motion to challenge it.
According to Topa Spirits, the small pisco company wasn’t the one to fire the first shot.
The Washington-based, women-owned and distilled company has been selling small-batch Peruvian pisco brand Piscología in the U.S. since 2010. Mezcal de Amor was founded that same year by Mexican entrepreneurs Santiago Suarez Cordova and Luis Niño de Rivera, and has gradually widened its distribution of mezcal internationally— with a recent boost from Suntory Spirits.
Last August, Mezcal de Amor sent Topa Spirits a cease-and-desist letter demanding that the pisco brand stop all use of the term “Logía.” (It should be noted that the marks differ by accent). The letter claims Mezcal de Amor has been using “Logia” since 2009 and that Topa Spirits’ current website “represents an apparent change” from the prior Piscología mark to a separate Logía mark, and is “likely to create consumer confusion,” falsely suggesting that the goods are “produced by, sponsored by or licensed by or otherwise associated with Mezcal de Amor.”
But Piscología has been trademarked since 2010 and since 2014 its labels have separated and emphasized the “Logía” portion of its logo — a requirement of the TTB to separate alcohol class type or designation (such as vodka or Chardonnay) from a brand name. Mezcal de Amor did not apply for U.S. trademark rights to use the Mezcal Amaras Logía composite mark until 2020, which it received in 2021.
Kami Kenna, co-owner of Piscología, suspects that after years of co-existing, the timing of Mezcal de Amor’s letter may have something to do with Suntory’s strategic partnership with Mezcal de Amor, announced June 2023. Piscología also rebranded slightly in 2022, which may have caught the attention of Mezcal de Amor.
Mezcal de Amor refused to comment for this story, and Suntory Spirits did not return BevNET’s request for comment.
In response, Topa Spirits sent a counter cease-and-desist letter, as well as initiated a proceeding at the U.S. Patent and Trademark Office (USPTO) seeking to cancel Mezcal de Amor’s registered mark, and filed a separate trademark application for “Logía” claiming priority back to 2012.
Mezcal de Amor requested two extensions to reply to the cease-and-desist letter sent by Topa Spirits before Luis Mouray, co-CEO of Mezcal de Amor, reached out to Piscología’s lawyers and privately to its owners to “work things out,” according to Kenna. A lawyer who reviewed the case suspects that Mezcal de Amor may have thought their initial letter would go a different route.
“It’s possible Mezcal de Amor thought they were going to send a scary letter to Topa Spirits and they were just going to roll over and do whatever they asked them to do,” said Nashville-based Rachel Lawson, an attorney at Dickinson Wright who specializes in working with entrepreneurs in bev-alc. “Which isn’t to say that tactic doesn’t work, it works all the time.”
But Topa Spirit responded “very aggressively” and “appropriately,” Lawson said, to avoid ending up in a defensive position in the courts. “Turns out the kitty has claws,” she said.
From Kenna’s perspective, Topa Spirits has now been backed into a corner— while they were concerned about the confusion between the brands before, they are now taking on the financial burden of turning the tables on a larger company in a larger category.
“You’re planning on just usurping our brand and thinking because we’re small no one cares,” Kenna said. “We have to fight this because now we’re battling against this stronger category, not to mention men, and we have a stake in this name.”
The complaint argues that the trademarks on Mezcal de Amor’s products “are likely to mislead the public into concluding that its goods originate with or are authorized by Topa Spirits, which will damage both Topa Spirits and the public.” Topa Spirits also maintains in the complaint that the company has suffered, and will continue to suffer the loss of “income, profits, reputation and goodwill.”
Paying an attorney and filing fees, plus preparing for future legal dispute, has forfeited a number of opportunities for Topa Spirits, said Kenna: the company was planning on bringing distributors to Peru which it put on hold, and “barely eked” out an export from Peru just to satiate U.S. demand.
Mezcal de Amor now is tasked with an “uphill battle,” Lawson said, as it aims to overcome having an “inferior mark,” meaning its trademark was filed after Topa Spirits. Still, both companies are now in for what could be an expensive litigation and will be hard tasked with showing proof of damages or confusion, unless they come to an agreement.
Is the Juice Worth The Squeeze?
Is there a lesson other companies can learn from this case?
Lawson argues that while she doesn’t think there was a misstep on Topa Spirits’ part, the case can now come down to a space between words, based on the TTB’s requirement to separate “Pisco” from “Logía.” As the brand organically flowed into using Logía on its own, trademarking it could have prevented Mezcal de Amor from even registering.
“If your brand starts to organically morph into something that is not what you originally filed then you better go file with the new thing and not do it later,” Lawson said.
The lawyer also added that the original cease-and-desist could have been inspired by new investors or partners, but Mezcal de Amor is now staring down the barrel of a trademark dispute that in the worst-case-scenario could disrupt the company’s ability to sell their brand.
“You always have to weigh the benefits and the risks,” she said. “Is the juice really worth the squeeze on that one?”