## Facts

- James Buchanan & Co. produced Scotch whisky sold in the United States for decades under the federally registered trademark “Black & White,” supported by substantial advertising and public recognition.
- Fleischmann Distilling Corp. imported and distributed Buchanan’s “Black & White” whisky in the United States.
- Maier Brewing Co. began marketing beer under the name “Black White” (sometimes shown as “Black & White”).
- Ralphs Grocery Co. sold Maier’s “Black White” beer at retail.
- Plaintiffs alleged Maier’s use infringed the “Black & White” mark and constituted unfair competition by creating consumer confusion and trading on plaintiffs’ goodwill.
- After a bench trial, the district court ruled for defendants, dismissed the action, and awarded costs to defendants.
- Plaintiffs appealed.

## Issues

1. Whether a well-known trademark for Scotch whisky extends to bar use of the same or confusingly similar mark on beer, a different alcoholic beverage.
2. Whether defendants’ use of “Black White” on beer created a likelihood of confusion as to source, sponsorship, or affiliation sufficient to establish trademark infringement and unfair competition.

## Decision

- The Ninth Circuit reversed the judgment for defendants.
- The court held plaintiffs’ “Black & White” mark was strong and widely recognized for Scotch whisky.
- The court concluded beer and whisky are sufficiently related goods, commonly offered through overlapping channels of trade to similar consumers.
- The court held defendants’ “Black White” designation on beer was likely to cause consumer confusion and therefore constituted trademark infringement and unfair competition.
- The case was remanded for further proceedings consistent with the appellate ruling, including injunctive relief against continued use of the mark on beer.

## Legal Principles

- Trademark protection is not limited to identical or directly competing goods; it can extend to related, non-identical goods when consumers are likely to assume a common source or sponsorship.
- A strong and well-known mark receives broader protection in assessing the reach of the owner’s rights and the risk of confusion.
- Likelihood of confusion, not proof of actual confusion, is the governing standard; infringement exists if ordinary purchasers exercising ordinary care are likely to be misled as to source or affiliation.
- Use of a confusingly similar name on related goods that capitalizes on the senior user’s reputation supports both trademark infringement and unfair competition claims.

## Conclusion

The Ninth Circuit held that the “Black & White” Scotch whisky trademark barred use of “Black White” on beer because the goods were related, sold through overlapping channels, and the virtually identical marks created a likelihood of confusion, requiring reversal of the defense judgment and supporting injunctive relief.


Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149 (9th Cir. 1963)