The opinion of the court was delivered by: RICHARD OWEN
Jim Beam is a maker of distilled alcoholic beverages, notably JIM BEAM Kentucky bourbon whisky and related products. It has manufactured and sold bourbon whiskey since 1795. More recently it has broadened its line to include tequila, pre-mixed alcoholic drinks and other products. "JIM BEAM" is the name of its principal product, though other products are derivatives of the BEAM name alone: BEAM'S CHOICE, BEAMERO, BEAM'S BLACK LABEL. These marks are registered with the United States Patent and Trademark Office. Beam has never manufactured or sold beer, ale, or stout.
Defendant Beamish & Crawford Ltd ("B & C") is a corporation existing under the laws of Ireland that produces BEAMISH stout, a rich, dark, heavily malted beer. Since 1792 B & C has manufactured and sold Beamish stout in Ireland, its efforts largely centered in the city of Cork. B & C is now a wholly-owned subsidiary of Carling O'Keefe Breweries of Canada, Ltd., a subsidiary of the Foster's Brewing Group, Ltd., the fourth largest brewer in the world.
In August 1983, B & C registered the Beamish stout trademark in the United States, but in November 1983, Jim Beam brought a proceeding before the Trademark Trial and Appeal Board to cancel B & C's BEAMISH registration, contending that there was a likelihood of confusion between the BEAM and BEAMISH marks. While the Board denied Jim Beam's petition, stating that the marks were sufficiently dissimilar and that stout beer and bourbon whisky were "distinctly different products" whose origins were unlikely to be confused, the United States Court of Appeals for the Federal Circuit reversed, holding that the Board had erroneously stressed the dissimilarities of the products and the marks, and that since the word BEAM was at the heart of the two alcoholic beverages, confusion was likely. The Court accordingly cancelled B & C's registration for BEAMISH in March 1989.
In August 1989, Jim Beam commenced this action alleging Lanham Act trademark infringement and state-law claims of trademark dilution and false advertising. It sought an injunction against the use of the BEAMISH mark in the United States. Jim Beam then moved for summary judgment on collateral estoppel grounds which I reluctantly granted in October 1990.
On appeal, however, the Second Circuit disagreed. It held collateral estoppel inapplicable because the Federal Circuit had before it a cancellation proceeding, whereas the issue here is trademark infringement, and "though worded similarly, the issue of likelihood of confusion in a cancellation proceeding may be different from the issue of likelihood of confusion in an action for infringement." 937 F.2d at 734.
Further, the Second Circuit held that equitable considerations may be considered in determining the scope of relief granted if the likelihood of confusion issue were to be decided against B & C by this Court.
any person who shall, without the consent of the registrant--
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; . . .
shall be liable in a civil action by the registrant for the remedies ...