LOUISVILLE, KY (WAVE) - Two Kentucky born and bred companies will soon fight it out in federal court.
Maker’s Mark filed a lawsuit against Louisville company Ted’s Cigars, prompting Ted’s to file a countersuit.
For two decades, the two well-known companies have enjoyed a successful working relationship. But that changed in January, as Maker’s Mark filed suit for trademark infringement, claiming Ted’s Bourbon Cigars makes money on the back of Maker’s Mark by using the company’s name and red wax.
The owner of Ted’s Cigars, Ted Jackson, told WAVE 3 News he is shocked by the suit. The Louisville businessman said 20 years ago, it was former Maker’s Mark President Bill Samuels who asked him to make cigars with a Maker’s Mark band and the bourbon’s seasoning, for a theme party. But he said new Maker’s leadership -- Samuels' son -- is closing the bluegrass party down.
“They granted us a license to go out and sell the cigar nationally and internationally,” Jackson said.
He waxed poetic talking about his red wax cigar. Jackson said he still can’t believe it’s now Maker’s Mark versus Ted’s Cigars.
"We make the coffee for Maker's Mark right now," he said.
That’s because Jackson says he has long served as the master licensee for Maker’s Mark, for everything from chocolate, to clothes, to the online store. He said a few years ago, Maker’s Mark, who gets a percentage of sales from the cigars, wanted its trademark off the product.
“They came to me and said, ‘We’re not going to renew the license,’ which is entirely their prerogative,” Jackson recalled.
With two years still on the contract, many employees working for him and millions of dollars invested in cigars, Jackson met with a legal team to transition out of the Maker’s Mark Cigar into the Ted’s Bourbon Cigar. The red dripping wax became straight line wax -- like wine makers and other cigar companies use -- and the company dumped all Maker’s graphics and trademarks.
The only thing left? A band that reads seasoned with Maker’s Mark, which Jackson said they are allowed by law to post under the use doctrine, as ingredients can be listed without using a company’s graphic.
“We sent notices out to all our accounts,” Jackson explained.
He said all was well until he got a letter from new leader Rob Samuels in 2017, asking him to just scrap the cigar. Jackson said lawyers on both sides talked, but nothing came out of it.
“We heard not one word from them,” Jackson said, “until the lawsuit was filed.”
Jackson said what’s bizarre is, after Maker’s made the demand, it continued buying the cigar and used it in promotions like one at Louisville’s Volare Restaurant.
He said his strongest evidence against Maker’s lawsuit is Gurkha Cigars, and Maker’s own words to him.
“Twenty years ago, I went to Maker’s and asked them to stop a competitor (Gurkha ) from ripping us off using dripping wax for a cigar,” Jackson said. “Maker’s came back to me at the time, their general counsel, and said, ‘We do not have rights to dripping wax on a cigar.’”
Jackson said he can’t believe Maker’s is going after the Louisville company it has worked with for so long, instead of out-of-state competitors doing the same thing.
“We are not going to be bullied," he said of the suit and his countersuit. "And they picked the wrong guy to pick a fight with.”
In its complaint, Maker’s Mark alleges that by still using their product for its seasoning, Ted’s Bourbon Cigar causes confusion for Maker’s Mark consumers, believing it’s still associated with the brand.
Maker’s Mark attorney in the federal case, Doug Ballantine, sent WAVE 3 News the following statement: