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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
LOUISVILLE DIVISION
Electronically Filed
HEAVEN HILL DISTILLERIES, INC.
PLAINTIFF
v.
HEAVEN’S DOOR SPIRITS, LLC
DEFENDANT

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CIVIL ACTION NO. 3:18-CV-556-DJH

COMPLAINT FOR TRADEMARK INFRINGEMENT,
TRADE NAME INFRINGEMENT, AND UNFAIR COMPETITION
Plaintiff Heaven Hill Distilleries, Inc. (“Heaven Hill”), by counsel, brings this Complaint
against Defendant Heaven’s Door Spirits, LLC (“Heaven’s Door” or “Defendant”), and
respectfully states as follows:
PRELIMINARY STATEMENT
1.

This is an action for infringement of Heaven Hill’s federally registered trademark

HEAVEN HILL under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); for infringement
of Heaven Hill’s trade name “Heaven Hill,” unfair competition, and false designation of origin
under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and for substantial and related
claims under the statutes and common law of the Commonwealth of Kentucky, all arising from
Defendant’s unauthorized use of the mark HEAVEN’S DOOR in connection with the
production, distribution, marketing, advertising, promotion, offering for sale, and sale of
whiskey.
2.

Heaven Hill seeks injunctive and monetary relief.

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PARTIES
3.

Heaven Hill is a corporation organized under Kentucky law and has its principal

place of business in Bardstown, Kentucky. 
4.

Upon information and belief, Defendant Heaven’s Door is a limited liability

company formed under the laws of Delaware, with its principal place of business in Chicago,
Illinois. Upon information and belief, Defendant has four (4) members who are domiciliaries
and citizens of Illinois: Marc Bushala, Jeff Rosen, Andrew Rashkow, and Tom Flocco.
JURISDICTION AND VENUE
5.

This Court has original jurisdiction over this action pursuant to 15 U.S.C. § 1121

and 28 U.S.C. § 1331, inasmuch as this action arises under the Trademark Act of 1946, as
amended, 15 U.S.C. § 1051 et seq. This Court has supplemental jurisdiction over the state law
claims pursuant to 28 U.S.C. § 1367.
6.

Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b)(2) because a

substantial part of the events giving rise to the claims in this Complaint occurred in this judicial
district.
7.

This Court has personal jurisdiction over Defendant under KRS § 454.210,

Kentucky’s long-arm statute, because Defendant engaged in the actions complained of herein
within this judicial district, including infringing upon Heaven Hill’s trademark and trade name
by marketing and selling whiskey under the mark HEAVEN’S DOOR within this judicial
district.
FACTUAL BACKGROUND
Heaven Hill’s Trademark
8.

Heaven Hill is the largest independent family-owned and operated producer and

marketer of distilled spirits in the United States. Operating since 1935, Heaven Hill has retained

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its commitment to independence and family-ownership grounded in a mission and core values
suited to building for the long term.
9.

Heaven Hill is also the owner of the HEAVEN HILL trademark, and related

trademarks incorporating the HEAVEN HILL mark, which it uses in connection with a wide
range of alcoholic beverages, including, without limitation, whiskey, bourbon,1 and other
distilled spirits, along with retail store services, visitor centers, and a distillery (“Heaven Hill’s
Goods and Services”). Heaven Hill, directly and through its predecessors, has used the mark
HEAVEN HILL continuously in connection with the sale of whiskey since at least as early as
1937.
10.

Heaven Hill is the owner of the trade name “Heaven Hill,” which it has used

continuously in connection with the production and marketing of its distilled spirits and liquors,
as well as for its distillery, distillery tours, and Bourbon Heritage Center services.
11.

Heaven Hill was founded by the Shapira family in Bardstown, Kentucky in the

mid 1930’s, shortly after Prohibition and at the height of the Great Depression, as Old Heaven
Hill Springs Distillery, Incorporated. It has been in continuous operation though its successors,
Old Heaven Hill Springs Distillery, a partnership of three of the founding Shapira brothers, and
the current entity, Heaven Hill Distilleries, Inc., beginning in 1958. At all times Heaven Hill has
been controlled by the Shapira family. As of 2018, Heaven Hill is the largest independent
family-owned-and-operated producer of distilled spirits, and according to industry analysis, is
also the sixth-largest spirits supplier in the United States, and the second-largest holder of aging
bourbon whiskey in the world, with an inventory in excess of 1,400,000 barrels.
1

Bourbon is a form of whiskey that is made in the United States with a mash bill of at least 51%
corn, among other requirements. All bourbons and whiskeys are distilled spirits. Any time the
word “whiskey” is used in the singular in this Complaint (or elsewhere, for that matter), it
necessarily encompasses bourbons.
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12.

Over the last three decades, Heaven Hill has built on its foundation of American

whiskeys to become a broadly diversified supplier of whiskeys, liqueurs, vodkas, rums, and other
spirits under the HEAVEN HILL Mark and other marks. Among many things, Heaven Hill is
known for its HEAVEN HILL-branded Kentucky straight bourbon whiskeys, as shown below:

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13.

Heaven Hill sells HEAVEN HILL-branded whiskey in all fifty states.

14.

Heaven Hill’s brand portfolio also includes the world’s second-largest selling

bourbon, Evan Williams® Bourbon; Elijah Craig® Small Batch Bourbon; and various other
award-winning bourbons and whiskeys.

15.

Heaven Hill produces and distributes these various whiskeys and bourbons

alongside dynamic brands of other types of distilled spirits and alcoholic beverages, including
Deep Eddy® Vodka; Lunazul® Tequila; and category leading brands Burnett’s® Vodka,
Christian Brothers® Brandy, Carolan’s Irish Cream®, and Admiral Nelson’s® Rums under the
umbrella of HEAVEN HILL BRANDS®. Heaven Hill also produces and sells a number of
distilled spirits and alcoholic beverages designed to fill growing segments of the on- and offpremise market like Hpnotiq® Liqueur, Blackheart® Rum, Domaine de Canton®, and PAMA®
Liqueur under the umbrella of HEAVEN HILL BRANDS®.
16.

Heaven Hill has been, and continues to be, selected for numerous awards and

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accolades, including its HEAVEN HILL SELECT STOCK bourbon winning the silver medal for
Double Barreled Bourbon at the 2017 World Whiskies Awards. Heaven Hill also won Icons of
Whiskey Distiller of the Year awards from Whisky Magazine in 2008, 2009, 2016, and 2017, and
U.S. Whiskey Distiller of the Year award from Whisky Magazine in 2009.
17.

Heaven Hill is the owner of valid and subsisting United States Registration

No. 693,986 on the Principal Register in the United States Patent and Trademark Office
(“USPTO”) for HEAVEN HILL for use in connection with whiskey, which has become
incontestable within the meaning of Section 15 of the Lanham Act, 15 U.S.C. § 1065. Attached
at Exhibit 1 is a true and correct copy of the registration certificate and maintenance records for
Heaven Hill’s United States HEAVEN HILL Registration No. 693,986, which was issued by the
USPTO on March 1, 1960.
18.

Heaven Hill and its predecessors have used the HEAVEN HILL mark in

commerce throughout the United States continuously since at least as early as September 1937 in
connection with whiskey. Attached at Exhibit 2 are photographs showing Heaven Hill’s use of
the HEAVEN HILL mark.
19.

Heaven Hill is the owner of valid and subsisting United States Registration

No. 355,451 on the Principal Register in the USPTO for OLD HEAVEN HILL for use in
connection with whiskey. Attached at Exhibit 1 is a true and correct copy of the registration
certificate and maintenance records for Heaven Hill’s United States OLD HEAVEN HILL
Registration No. 355,451, which was issued by the USPTO on March 15, 1938.
20.

Heaven Hill and its predecessors have used the OLD HEAVEN HILL mark in

commerce throughout the United States continuously since at least as early as July 1937 in

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connection with whiskey. Attached at Exhibit 2 are photographs showing Heaven Hill’s use of
the OLD HEAVEN HILL mark.
21.

Heaven Hill is the owner of valid and subsisting United States Registration

No. 3,875,902 on the Principal Register in the USPTO for AMERICAN WHISKEY
COLLECTION HEAVEN HILL DISTILLERIES, INC. HH DISTILLERIES & Design for use
in connection with whiskey, which has become incontestable within the meaning of Section 15
of the Lanham Act, 15 U.S.C. § 1065. Attached at Exhibit 1 is a true and correct copy of the
registration certificate and maintenance records for Heaven Hill’s United States Registration
No. 3,875,902, which was issued by the USPTO on November 16, 2010.
22.

Heaven Hill has used the AMERICAN WHISKEY COLLECTION HEAVEN

HILL DISTILLERIES, INC. HH DISTILLERIES & Design mark in commerce throughout the
United States continuously since at least as early as September 2009 in connection with whiskey.
Attached hereto at Exhibit 2 are photographs showing Heaven Hill’s use of the AMERICAN
WHISKEY COLLECTION HEAVEN HILL DISTILLERIES, INC. HH DISTILLERIES &
Design mark.
23.

Heaven Hill is the owner of valid and subsisting United States Registration

No. 4,495,860 on the Principal Register in the USPTO for HEAVEN HILL SELECT STOCK &
Design for use in connection with alcoholic beverages except beer. Attached at Exhibit 1 is a
true and correct copy of the registration certificate for Heaven Hill’s United States HEAVEN
HILL SELECT STOCK & Design Registration No. 4,495,860, which was issued by the USPTO
on March 11, 2014.
24.

Heaven Hill has used the HEAVEN HILL SELECT STOCK & Design mark in

commerce throughout the United States continuously since at least as early as November 2013 in

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connection with alcoholic beverages except beer. Attached at Exhibit 2 are photographs showing
Heaven Hill’s use of the HEAVEN HILL SELECT STOCK & Design mark in connection with
these distilled spirits.
25.

Heaven Hill is the owner of valid and subsisting United States Registration

No. 4,770,439 on the Principal Register in the USPTO for HEAVEN HILL BRANDS & Design
for use in connection with alcoholic beverages except beer. Attached at Exhibit 1 is a true and
correct copy of the registration certificate for Heaven Hill’s United States HEAVEN HILL
BRANDS & Design Registration No. 4,770,439, which was issued by the USPTO on July 7,
2015.
26.

Heaven Hill has used the HEAVEN HILL BRANDS & Design mark in

commerce throughout the United States continuously since at least as early as December 2014 in
connection with alcoholic beverages except beer. Attached at Exhibit 2 are photographs showing
Heaven Hill’s use of the HEAVEN HILL BRANDS & Design mark.
27.

Heaven Hill is the owner of valid and subsisting United States Registration

No. 5,242,398 on the Principal Register in the USPTO for HEAVEN HILL DISTILLERY EST
1935 & Design for use in connection with alcoholic beverages except beer; retail store services
featuring distilled spirits, gifts, and sundries; and education and entertainment services, namely,
operating a visitor center facility exhibiting the operation of a distillery. Attached at Exhibit 1 is
a true and correct copy of the registration certificate for Heaven Hill’s United States HEAVEN
HILL DISTILLERY EST 1935 & Design Registration No. 5,242,398, which was issued by the
USPTO on July 11, 2017.
28.

Heaven Hill has used the HEAVEN HILL DISTILLERY EST 1935 & Design

mark in commerce throughout the United States continuously since at least as early as December

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2016 in connection with alcoholic beverages except beer; retail store services featuring distilled
spirits, gifts, and sundries; and education and entertainment services, namely, operating a visitor
center facility exhibiting the operation of a distillery. Attached at Exhibit 2 are photographs
showing Heaven Hill’s use of the HEAVEN HILL DISTILLERY EST 1935 & Design mark.
29.

Heaven Hill is the owner of the United States Application Serial No. 87/826,002

for HEAVEN HILL INC. & Design for use in connection with alcoholic beverages except beer,
which has been Allowed by the USPTO on July 3, 2018. Attached at Exhibit 1 is a true and
correct copy of the application filed with the USPTO on March 8, 2018.
30.

As a result of its widespread, continuous and exclusive use of the HEAVEN HILL

mark, and marks incorporating HEAVEN HILL, to identify its distilled spirits and Heaven Hill
as their source, Heaven Hill owns valid and subsisting federal statutory and common law rights
to the HEAVEN HILL mark (hereinafter, and collectively, the “HEAVEN HILL Mark”).
31.

Heaven Hill’s HEAVEN HILL Mark is distinctive to both the consuming public

and Heaven Hill’s trade.
32.

Heaven Hill has expended substantial time, money, and resources marketing,

advertising, and promoting its Goods and Services sold under the HEAVEN HILL Mark
including, but not limited to, through use of various media, including print, podcast, and
Internet; social media marketing; trade show booth and event activation; production and
dissemination of collateral, including printed materials and promotional items; video
production; and distributor incentives. In the last five (5) years, Heaven Hill has expended in
excess of $7,500,000 marketing, advertising, and promoting distilled spirits and whiskeys
marketed under the Heaven Hill umbrella. More than $3,600,000 of this amount was spent on
HEAVEN HILL-branded distilled spirits and whiskeys, including more than $600,000 on

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HEAVEN HILL-branded whiskeys and bourbons.
33.

Heaven Hill, directly and through its authorized distributors, distributes and sells

distilled spirits under the HEAVEN HILL Mark through a three-tier distribution system, which
effectively limits the trade channels through which alcoholic beverages can be distributed.
34.

During the last five (5) years, Heaven Hill has sold more than 830,000 nine (9)

liter equivalent cases of HEAVEN HILL-branded whiskeys and bourbons, and has sold more
than 3.7 million nine (9) liter equivalent cases HEAVEN HILL-branded distilled spirits.2
35.

Heaven Hill provides retail store services, and operates visitor centers and

distilleries, under the HEAVEN HILL Mark. The Heaven Hill EVAN WILLIAMS BOURBON
EXPERIENCE® in Downtown Louisville is visited by more than 100,000 visitors a year, while
the Heaven Hill Bourbon Heritage Center in Bardstown—a stop on the wildly successful
Kentucky “Bourbon Trail”—receives approximately 65,000 annual visitors a year, which include
visitors from every state in the nation.
36.

Heaven Hill also generates a large volume of website traffic, including more than

165,000 unique visitors to www.heavenhill.com with more than 750,000 page views and more
than 230,000 unique visitors to www.heavenhilldistillery.com with more than 700,000 page
views over the last year.
37.

Heaven Hill has scrupulously and successfully enforced and protected its

HEAVEN HILL Mark against past infringements, through cease-and-desist letters, domain name
enforcement actions, and litigation.

Heaven Hill engages a watch service to monitor for

2

Traditionally, the most common form of shipping carton in the distilled spirits trade has been a
carton with twelve (12) 750 ml bottles—nine (9) liters of spirits. The trade has therefore adopted
“nine (9) liters equivalent cases” as the standard unit of measure for reporting product volume.
Thus, shipments of cartons containing a different volume of spirits are reported as the equivalent
volume of nine (9) liter cases.
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potentially infringing uses of its HEAVEN HILL Mark and acts upon watch notices when it
believes a third-party mark will infringe Heaven Hill’s rights and thereby cause harm to Heaven
Hill.
38.

As a result of Heaven Hill’s expenditures and efforts, the HEAVEN HILL Mark

is very strong. It has come to signify the high quality of the whiskeys, bourbons, and distilled
spirits designated by the HEAVEN HILL Mark, and acquired incalculable distinction, reputation,
and goodwill belonging exclusively to Heaven Hill.
39.

Heaven Hill has received significant unsolicited coverage in various media

pertaining to Heaven Hill’s Goods and Services in connection with the HEAVEN HILL Mark.
Defendant’s Infringing Activity
40.

Defendant is engaged in the production, distribution, marketing, and sale of

distilled spirits, namely a series of American whiskeys.
41.

Approximately eighty (80) years after Heaven Hill acquired protectable exclusive

rights in its HEAVEN HILL Mark, Defendant adopted and began using the mark HEAVEN’S
DOOR (hereinafter, the “Infringing Mark” or the “HEAVEN’S DOOR Mark”) in United States
commerce, and did so without Heaven Hill’s authorization.
42.

The Infringing Mark adopted and used by Defendant is confusingly similar to

Heaven Hill’s HEAVEN HILL Mark, in that they both share a dominant and distinctive element
HEAVEN, resulting in similarities between the visual appearance, sound, and consumer
connotation of the marks, and are: (i) used in connection with identical and highly related goods;
(ii) likely to travel in identical and overlapping trade channels; and (iii) marketed to identical or
highly similar groups of consumers.
43.

More particularly, Heaven Hill’s HEAVEN HILL mark, Registration No.

693,986, and Defendant’s HEAVEN’S DOOR Mark are confusingly similar in that the marks
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share an essentially identical first element (“HEAVEN”) followed by a single-syllable, fourletter word (“HILL” and “DOOR”), both generally printed in stacked, block-script letters,
resulting in similarities between the visual appearance, sound, and consumer connotation of the
marks. And, as noted above, the goods associated with these two marks are: (i) identical or
nearly identical; (ii) likely to travel in identical and overlapping trade channels; and (iii)
marketed to identical or highly similar groups of consumers.
44.

According to the publicly available Trademark Status & Document Retrieval

records (“TSDR”), Defendant has applied for U.S. federal trademark protection for the mark
HEAVEN’S DOOR, Application Serial Number 87/401,073, for use in connection with distilled
spirits. Attached as Exhibit 3 is a true and correct copy of the application filed with the USPTO
on April 6, 2017.
45.

According to the publicly available TSDR records, Defendant has also applied for

U.S. federal trademark protection for the stylized version of the mark HEAVEN’S DOOR,
Application Serial Number 87/401,078, for use in connection with distilled spirits. Attached as
Exhibit 3 is a true and correct copy of the application filed with the USPTO on April 6, 2017.
46.

Defendant has been engaged in the production, distribution, advertising,

promotion, offering for sale, and sale of distilled spirits using the Infringing Mark throughout the
United States, including specifically in Kentucky, Tennessee, Illinois, Florida, New York, Texas,
and California. Attached hereto as Exhibit 4 are true and correct photographic depictions of the
distilled spirits showing Defendant’s use of the Infringing Mark.
47.

The distilled spirits Defendant has produced, distributed, marketed, advertised,

promoted, offered for sale, and sold under the Infringing Mark are identical goods to many of

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those produced by Heaven Hill under the HEAVEN HILL Mark, particularly a series of
American whiskeys.
48.

Defendant has produced, distributed, marketed, advertised, promoted, offered for

sale, and sold its distilled spirits under the Infringing Mark through the identical, regulated
channels of trade through which Heaven Hill’s HEAVEN HILL brand products move in at least
Kentucky, Tennessee, Illinois, Florida, New York, Texas and California.
49.

In fact, Defendant has promoted, distributed, and sold its product in and around

Louisville, Kentucky, which is within this judicial district and division, and is where Heaven Hill
was founded and has distilled whiskey under the HEAVEN HILL Mark since 1937. Upon
information and belief, Defendant intentionally and willfully intended to trade upon the goodwill
of Heaven Hill in its HEAVEN HILL Mark by its actions in distributing, marketing, advertising,
promoting, offering for sale, and selling in trade channels identical to and overlapping with
Heaven Hill.
50.

Upon information and belief, Defendant has marketed, advertised, and promoted

its distilled spirits under the Infringing Mark through various media, including print and Internet,
and social media marketing, which are also channels used by Heaven Hill for its marketing,
advertising, and promotion.
51.

Defendant offers and sells its distilled spirits under the Infringing Mark to

identical and highly related groups of consumers as those to whom Heaven Hill offers and sells
its products, namely American whiskey drinkers of a legal age to purchase such products.
52.

In August 2017, Heaven Hill became aware of Defendant’s applications to

register the HEAVEN’S DOOR Mark for use in connection with distilled spirits. At that time,
each of Defendant’s applications was filed based on Defendant’s intent to use the HEAVEN’S

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DOOR Mark and without further specification of planned use. Given the mere intent to use
nature of the trademark applications, Heaven Hill continued to monitor to determine if Heaven’s
Door would ever produce a product.
53.

In April 2018, Heaven Hill found certificates of label approval (“COLAs”) issued

by the Alcohol and Tobacco Tax and Trade Bureau (“TTB”) demonstrating that Heaven’s Door
was launching a series of American whiskey products prominently featuring the HEAVEN’S
DOOR Mark in an all caps, block text, and stacked format. Upon learning of Defendant’s
intention to use the HEAVEN’S DOOR Mark in connection with whiskey, Heaven Hill decided
to take action.
54.

On April 25, 2018, Heaven Hill, through counsel, sent a cease-and-desist letter to

Defendant objecting to Defendant’s use of the Infringing Mark and demanding it cease and desist
use of the HEAVEN’S DOOR Mark. Attached as Exhibit 5 is a true and correct copy of Heaven
Hill’s counsel’s cease-and-desist letter to Defendant.
55.

On May 3, 2018, counsel for Defendant sent a response to Heaven Hill’s cease-

and-desist letter and indicated that Defendant did not believe a likelihood of confusion would
result from its use of the HEAVEN’S DOOR Mark and advised that it did not intend to change
the Infringing Mark or otherwise comply with the demands set out in Heaven Hill’s counsel’s
cease-and-desist letter.
56.

Within five (5) days of receipt of this letter, Heaven Hill had its attorney engage

prominent consumer survey expert Hal Poret to conduct a scientific survey to determine whether
Defendant’s use of the Heaven’s Door name for its product would create a likelihood of
confusion with Heaven Hill. Mr. Poret conducted a sequential lineup version of a “Squirt”
format survey, which “is an attempt to replicate the marketplace process of advertising exposure

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to a brand or trade dress, followed by being confronted in the market with both similar and
differing brands or trade dresses.” See J. Thomas McCarthy, 6 McCarthy on Trademarks and
Unfair Competition § 32:177 (5th ed.). It is well accepted as a standard method for assisting
likelihood of confusion in situations where, as here, the parties’ products are directly competitive
or sufficiently related or overlapping such that consumers would be reasonably likely to
encounter both in close proximity in the marketplace.
57.

The result of such a survey is a “confusion rate,” and courts have held that

confusion rates between 25% and 50% are extremely solid support for a finding of likelihood of
confusion.

See Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 466–67 (4th Cir. 1996)

(survey results of between 30% and 40% supported a likelihood of confusion, “but even if the
true figure were only half of the survey estimate, actual confusion would . . . nevertheless exist to
a significant degree”); McNeil-PCC, Inc. v. Granutec, Inc., 919 F. Supp. 198, 202–03 (E.D.N.C.
1995) (survey results of 28% and 21% supported a likelihood of confusion).
58.

Other courts have found that when additional evidence is supportive, a confusion

rate between 10% and 20% is strong enough. See Mut. of Omaha Ins. Co. v. Novak, 836 F.2d
397, 400 (1987) (survey result of 10% supported a likelihood of confusion, despite some
“ambiguity” in the questions); Exxon Corp. v. Tex. Motor Exchange of Houston, Inc., 628 F.2d
500, 507 (5th Cir. 1980) (survey result of 15% constituted strong evidence of a likelihood of
confusion); NFL v. Governor of State of Del., 435 F. Supp. 1372, 1380-81 (D. Del. 1977) (survey
result of 19% and 21% supported a finding of substantial confusion); Jockey Int’l, Inc. v.
Burkard, No. 74 123 S, 1975 WL 21128, at *6 (S.D. Cal. Feb. 21, 1975) (survey result of 11.4%
supported a likelihood of confusion when considered alongside additional evidence); Grotian,
Helfferich, Schultz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp. 707, 716 (S.D.N.Y.

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1973) (survey result of 8.5% supported likelihood of confusion when considered alongside
additional evidence).
59.

Mr. Poret concluded his survey in July 2018, and found there to be a “high

likelihood of confusion—a net confusion rate of 39% in excess of the survey ‘noise’ or false
positive level as measured through a Control Group.” Attached as Exhibit 6 is a copy of the
Expert Report of Hal Poret Regarding Survey to Assess the Extent to which the Name
HEAVEN’S DOOR for Whiskey Creates a Likelihood of Confusion with HEAVEN HILL.
60.

Mr. Poret’s survey results scientifically confirm Heaven Hill’s position that

consumers are likely be confused by use of the HEAVEN’S DOOR Mark in connection with
whiskey products.
61.

Defendant’s infringing acts as alleged herein have caused and are likely to cause

confusion, mistake, and deception among the relevant consuming public as to the source or
origin of Defendant’s distilled spirits and have and are likely to deceive the relevant consuming
public into believing, mistakenly, that Defendant’s whiskeys originate from, are associated or
affiliated with, or otherwise authorized by Heaven Hill.
62.

Upon information and belief, Defendant’s acts are willful with the deliberate

intent to trade on the goodwill of the HEAVEN HILL Mark, cause confusion and deception in
the marketplace, and divert potential sales of Heaven Hill’s whiskeys.
63.

Defendant’s acts are causing, and unless restrained, will continue to cause damage

and immediate irreparable harm to Heaven Hill and to its valuable reputation and goodwill with
the consuming public for which Heaven Hill has no adequate remedy at law. Upon information
and belief, Defendant intends to continue to use the Infringing Mark in connection with the
production, distribution, marketing, advertisement, promotion, offer for sale, and sale of

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whiskeys unless otherwise restrained.
64.

Heaven Hill is suffering irreparable injury and has no adequate remedy at law.
COUNT I

Federal Trademark Infringement in Violation of Section 32 of the Lanham Act
65.

Each of the foregoing Paragraphs of this Complaint is hereby incorporated in this

Count by reference.
66.

Defendant’s unauthorized use in commerce of the Infringing Mark as alleged

herein is likely to deceive consumers as to the origin, source, sponsorship, or affiliation of
Defendant’s whiskeys, and is likely to cause consumers to believe, contrary to fact, that
Defendant’s whiskeys are sold, authorized, endorsed, or sponsored by Heaven Hill, or that
Defendant is in some way affiliated with or sponsored by Heaven Hill. Defendant’s conduct
therefore constitutes trademark infringement in violation of Section 32(1) of the Lanham
Act, 15 U.S.C. § 1114(1).
67.

Upon information and belief, Defendant has committed the foregoing acts of

infringement with full knowledge of Heaven Hill’s prior rights in the HEAVEN HILL Mark and
with the willful intent to cause confusion and trade on Heaven Hill’s goodwill.
68.

Upon information and belief, Defendant has made and will continue to make

substantial profits and gains to which it is not entitled in law or equity.
69.

Defendant’s conduct is causing immediate and irreparable harm and injury to

Heaven Hill, and to its goodwill and reputation, and will continue to both damage Heaven Hill
and confuse the public unless enjoined by this Court. Heaven Hill has no adequate remedy at
law.

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COUNT II
Trade Name Infringement in Violation of Section 43(a) of the Lanham Act
70.

Each of the foregoing Paragraphs of this Complaint is hereby incorporated in this

Count by reference.
71.

Defendant’s unauthorized use in commerce of the infringing mark as alleged

herein is likely to deceive consumers as to the origin, source, sponsorship, or affiliation of
Defendant’s whiskeys, and is likely to cause consumers to believe, contrary to fact, that
Defendant’s whiskeys are sold, authorized, endorsed, or sponsored by Heaven Hill, or that
Defendant is in some way affiliated with or sponsored by Heaven Hill. Defendant’s conduct
therefore constitutes trade name infringement in violation of Section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a).
72.

Upon information and belief, Defendant has committed the foregoing acts of

infringement with full knowledge of Heaven Hill’s prior rights in the “Heaven Hill” trade name
and with the willful intent to cause confusion and trade on Heaven Hill’s goodwill.
73.

Upon information and belief, Defendant has made and will continue to make

substantial profits and gains to which it is not entitled in law or equity.
74.

Defendant’s conduct is causing immediate and irreparable harm and injury to

Heaven Hill, and to its goodwill and reputation, and will continue to both damage Heaven Hill
and confuse the public unless enjoined by this Court. Heaven Hill has no adequate remedy at
law.
COUNT III
Unfair Competition in Violation of Section 43(a) of the Lanham Act
75.

Each of the foregoing Paragraphs of this Complaint is hereby incorporated in this

Count by reference.

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76.

Defendant’s unauthorized use in commerce of the Infringing Mark as alleged

herein is likely to deceive consumers as to the origin, source, sponsorship, or affiliation of
Defendant’s whiskeys, and is likely to cause consumers to believe, contrary to fact, that
Defendant’s whiskeys are sold, authorized, endorsed, or sponsored by Heaven Hill, or that
Defendant is in some way affiliated with or sponsored by Heaven Hill.
77.

Defendant’s unauthorized use in commerce of the Infringing Mark as alleged

herein constitutes use of a false designation of origin and misleading description and
representation of fact.
78.

Upon information and belief, Defendant’s conduct as alleged herein is willful and

is both intended to and likely to cause confusion, mistake, or deception as to the affiliation,
connection, or association of Defendant with Heaven Hill.
79.

Defendant’s conduct as alleged herein constitutes unfair competition in violation

of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
80.

Defendant’s conduct as alleged herein is causing immediate and irreparable harm

and injury to Heaven Hill, and to its goodwill and reputation, and will continue to both damage
Heaven Hill and confuse the public unless enjoined by this Court. Heaven Hill has no adequate
remedy at law.
COUNT IV
Trademark Infringement in Violation of KRS 365.601
81.

Each of the foregoing Paragraphs of this Complaint is hereby incorporated in this

Count by reference.
82.

Defendant’s use of the Infringing Mark is likely to cause confusion or mistake,

and to deceive consumers, the public, and the trade into believing that Defendant’s use of the
Infringing Mark is licensed, authorized, affiliated with, or sponsored by Heaven Hill.
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83.

Upon information and belief, Defendant has acted with knowledge of Heaven

Hill’s ownership of the HEAVEN HILL Mark, and has acted with deliberate intention or willful
blindness to unfairly benefit from the incalculable goodwill in the HEAVEN HILL Mark.
84.

Defendant’s acts constitute trademark infringement in violation of Heaven Hill’s

rights under KRS 365.601.
85.

Upon information and belief, Defendant has made and will continue to make

substantial profits and gains to which it is not entitled in law or equity.
86.

Defendant’s conduct as alleged herein is causing immediate and irreparable harm

and injury to Heaven Hill, and to its goodwill and reputation, and will continue to both damage
Heaven Hill and confuse the public unless enjoined by this Court. Heaven Hill has no adequate
remedy at law.
COUNT V
Trademark Infringement and Unfair Competition in Violation of Kentucky Common Law
87.

Each of the foregoing Paragraphs of this Complaint is hereby incorporated in this

Count by reference.
88.

Heaven Hill and its predecessors have continually used its HEAVEN HILL Mark

in connection with whiskey since at least as early as 1937, adding the additional related
trademarks incorporating the literal elements HEAVEN HILL over the years that followed.
89.

Defendant’s use of the HEAVEN’S DOOR Mark in connection with whiskey is

likely to cause confusion about the source of origin of the goods in violation of the common law
of the Commonwealth of Kentucky, in that such use of the Infringing Mark is likely to impair the
goodwill and unfairly profit from the use of a similarly confusing mark.
90.

Defendant’s wrongful use of the HEAVEN’S DOOR Mark as alleged herein is

likely to cause confusion and likely to deceive the public into believing falsely that Defendant’s
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goods are affiliated, associated, connected, sponsored or otherwise approved by Heaven Hill,
when in fact Defendant has no connection or affiliation whatsoever with Heaven Hill.
91.

Defendant, through its use of the Infringing Mark, has engaged in

misrepresentation, unfairly competing with Heaven Hill in violation of Kentucky common law.
92.

Defendant’s actions constitute trademark infringement and unfair competition in

violation of the common law of the Commonwealth of Kentucky.
93.

Upon information and belief, Defendant has made and will continue to make

substantial profits and gains to which it is not entitled in law or equity.
94.

Defendant’s conduct as alleged herein is causing immediate and irreparable harm

and injury to Heaven Hill, and to its goodwill and reputation, and will continue to both damage
Heaven Hill and confuse the public unless enjoined by this Court. Heaven Hill has no adequate
remedy at law.
PRAYER FOR RELIEF
WHEREFORE, Heaven Hill requests judgment against Defendant as follows:
1.

Holding that Defendant has violated Section 32 of the Lanham Act (15 U.S.C. §

1114) and Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a));
2.

Holding that Defendant has violated KRS 365.601 and the common law of the

Commonwealth of Kentucky;
3.

Granting preliminarily and permanently injunctive relief enjoining Defendant, its

employees, agents, officers, directors, attorneys, successors, affiliates, subsidiaries, and assigns,
and all of those in active concert and participation with any of the foregoing persons and entities
who receive actual notice of the Court’s order by personal service or otherwise from:
a.

Producing, distributing, selling, marketing, advertising, promoting, or authorizing
any third party to produce, distribute, sell, market, advertise or promote whiskeys
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bearing the HEAVEN’S DOOR Mark or any other mark that is a counterfeit,
copy, simulation, confusingly similar variation, or colorable imitation of Heaven
Hill’s HEAVEN HILL Mark;
b.

engaging in any activity that infringes Heaven Hill’s rights in its HEAVEN HILL
Mark;

c.

engaging in any activity that infringes Heaven Hill’s trade name;

d.

engaging in any activity constituting unfair competition with Heaven Hill;

e.

making or displaying any statement, representation, or depiction that is likely to
lead the public or the trade to believe that: (i) Defendant’s whiskeys are in any
manner approved, endorsed, licensed, sponsored, authorized, or franchised by or
associated, affiliated, or otherwise connected with Heaven Hill; or (ii) Heaven
Hill’s Goods and Services are in any manner approved, endorsed, licensed,
sponsored, authorized, or franchised by or associated, affiliated, or otherwise
connected with Defendant;

f.

using or authorizing any third party to use any false description, false
representation, or false designation of origin, or any marks, names, words,
symbols, devices, or trade dress that falsely associate such business, goods and/or
services with Heaven Hill or tend to do so;

g.

registering or applying to register any trademark, service mark, domain name,
trade name, or other source identifier or symbol of origin consisting of or
incorporating the HEAVEN’S DOOR Marks or any other mark that infringes or is
likely to be confused with the HEAVEN HILL Mark, or any goods or services of
Heaven Hill, or Heaven Hill as their source; and

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h.

aiding, assisting, or abetting any other individual or entity in doing any act
prohibited by subparagraphs (a) through (g);

4.

Granting such other and further relief as the Court may deem proper to prevent

the public and trade from deriving the false impression that any goods or services manufactured,
sold, distributed, licensed, marketed, advertised, promoted, or otherwise offered or circulated by
Defendant are in any way approved, endorsed, licensed, sponsored, authorized, or franchised by
or associated, affiliated, or otherwise connected with Heaven Hill or constitute or are connected
with Heaven Hill’s Goods and Services;
5.

Directing Defendant to cease all manufacture, display, distribution, marketing,

advertising, promotion, sale, offer for sale and/or use of any and all packaging, labels, catalogs,
shopping bags, containers, advertisements, signs, displays, and other materials that feature or
bear any designation or mark incorporating the HEAVEN’S DOOR Mark or any other mark that
is a counterfeit, copy, simulation, confusingly similar variation, or colorable imitation of the
HEAVEN HILL Mark, and to direct all distributors, retailers, wholesalers, and other individuals
and establishments wherever located in the United States that distribute, advertise, promote, sell,
or offer for sale Defendant’s goods or services to cease forthwith the display, distribution,
marketing, advertising, promotion, sale, and/or offering for sale of any and all goods, services,
packaging, labels, catalogs, shopping bags, containers, advertisements, signs, displays, and other
materials featuring or bearing the HEAVEN’S DOOR Mark or any other mark that is a
counterfeit, copy, simulation, confusingly similar variation, or colorable imitation of the
HEAVEN HILL Mark, and to immediately remove them from public access and view;
6.

Directing that Defendant recall and deliver up for destruction or other disposition

all goods, packaging, containers, advertisements, promotions, signs, displays, and related

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materials incorporating or bearing the HEAVEN’S DOOR Mark or any other mark that is
confusingly similar to, or a colorable imitation of, the HEAVEN HILL Mark;
7.

Directing Defendant to formally abandon with prejudice any and all of its

applications to register the HEAVEN’S DOOR Mark or any mark consisting of, incorporating,
or containing the HEAVEN HILL Mark or any confusingly similar variation or colorable
imitation thereof on any state or federal trademark registry, including, without limitation,
Application Serial Numbers 87/401,073 and 87/401,078;
8.

Directing, pursuant to Section 35(a) of the Lanham Act (15 U.S.C. § 1116(a)),

Defendant to file with the Court and serve upon Heaven Hill’s counsel within thirty (30) days
after service on Defendant of an injunction in this action, or such extended period as the Court
may direct, a report in writing under oath, setting forth in detail the manner and form in which
Defendant has complied therewith;
9.

Directing that Defendant account to and pay over to Heaven Hill all profits

realized by its wrongful acts in accordance with Section 35(a) of the Lanham Act (15 U.S.C. §
1117(a)), enhanced as appropriate to compensate Heaven Hill for the damages caused thereby;
10.

Awarding Heaven Hill punitive and exemplary damages as the Court finds

appropriate to deter any future willful infringement;
11.

Declaring that this is an exceptional case pursuant to Section 35(a) of the Lanham

Act (15 U.S.C. § 1117(a)), and awarding Heaven Hill its costs and reasonable attorneys’ fees
thereunder;
12.

Awarding Heaven Hill interest, including prejudgment and post-judgment

interest, on the foregoing sums; and
13.

Awarding such other and further relief as the Court deems just and proper.

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Respectfully submitted,
/s/ Christopher W. Brooker
Christopher W. Brooker
Matthew A. Williams
Sean G. Williamson
Julie A. Laemmle
WYATT, TARRANT & COMBS, LLP
500 West Jefferson Street, Suite 2800
Louisville, Kentucky 40202-2898
(502) 589-5235
cbrooker@wyattfirm.com
mwilliams@wyattfirm.com
swilliamson@wyattfirm.com
jlaemmle@wyattfirm.com

Counsel for Plaintiff, Heaven Hill
Distilleries, Inc.
61743081.10 

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