Dominic Massa / Eyewitness News
NEW ORLEANS - Calling it a case of "identity theft," the Rex Organization has filed a federal lawsuit against a California-based liquor distributor marketing a line of products labeled "King Rex Spirits."
The Rex Organization, which parades each Fat Tuesday and is incorporated under the formal name of The School of Design, filed a lawsuit Thursday in U.S. District Court against Rex Spirits., Inc. and Sal Ortiz, chief executive of the California-based liquor company. The company unveiled a line of vodka, rum and bourbon products under the King Rex Spirits name last year.
The lawsuit alleges that the company is infringing on Rex’s trademarks through its marketing, promotional activities and sales of its “King Rex” alcohol products.
The lawsuit claims that “Rex Spirits, Inc.’s sale of products under the School of Design marks substantially similar to the School of Design’s marks constitutes counterfeiting that will lead to mistake, deception or confusion. Rex Spirit, Inc.’s actions pose an immediate threat to the distinct, exclusive image the School of Design has created at great expense over 140 years.”
The suit cites in its lawsuit marketing and promotional language referring to the “Monarch of Merriment” and “King of Carnival,” which the krewe calls two of its “ most well-established and publically recognized monikers.”
The lawsuit seeks damages and injunctive relief.
While the krewe acknowledges in its suit that many registered trademarks exist with the name “Rex,” the lawsuit contends that none use the name in conjunction with symbols of Mardi Gras, “without any other marks which would distinguish their marks from Rex, the King of Carnival.”
“This is a clear cut example of a commercial product utilizing, both unlawfully and unethically, the considerable brand strength, historical legacy and goodwill of the Rex Organization to capitalize on its sales and profit goals,” said Rex official King Logan in a news release.
“Their product packaging design and consumer marketing and communications are solely focused on identifying with the Rex Organization’s history, icons and imagery so as to lead the consumer to believe that King REX Spirits and the Rex Organization are one and the same.”
Late Tuesday, nearly a week after the suit was filed, King Rex Spirits vice president and chief operating officer Desi Ortiz released a statement.
"King REX Spirits filed all of its trademark registrations within the United States Patent and Trademark Office without intention of infringing on the Rex Organization's trademark," Ortiz' statement read. "We consider our brand separate and independent from The School of Design. They provide a charitable non-profit service while King REX Spirits provides a commodity."
This is at least the second time in as many years that the King of Carnival has taken steps to protect its name and trademark, or threatened to.
In early 2012, the small, new Bywater neighborhood krewe of ‘tit Rex agreed to add an upside-down e, or phonetic symbol known as a schwa, to its name, in order to avoid a legal showdown with the Rex parade.
Rex officials had argued that the use of the term “Rex” by the smaller group was an infringement of the older krewe’s trade name. The Rex Organization threatened court action if the name was not changed, which it was.