Dominic Massa / Eyewitness News
The Rex Organization has settled its trademark infringement dispute with a Texas-based liquor distributor, who has agreed to stop producing products under the “King Rex” trade name which the New Orleans parading krewe said violated its trademark.
In January, the Rex Organization, calling it a case of identity theft, filed a federal lawsuit against King Rex Spirits and its founder, Sal Ortiz, seeking to stop the sale and production of the alcoholic products.
On Tuesday, one week after Mardi Gras, the krewe said that the company has agreed to stop producing any products under the “King Rex” trade name and immediately remove its liquor from store shelves in Louisiana, Mississippi, and Alabama.
“Further, the company agreed to cease immediately from using the imagery, traditions and history of the Rex Organization in marketing its products,” said the krewe in a news release.
The lawsuit claimed 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 cited 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.”
As part of the settlement, Rex agreed to allow Rex Spirits to liquidate the remainder of its existing inventory in states outside of Louisiana, Mississippi, and Alabama for a one-year period and in foreign countries for the next 18 months. But after that point, the company would be banned from selling any products under the “King Rex” trademark.
Lawyers for the Rex Organization said that the settlement agreement would be binding as a consent judgment, meaning the agreement will be enforceable as a final judgment of the Court.
“We are pleased to have this trademark matter resolved through settlement,” said Rex Organization spokesman King Logan.
“The issue here is very clear – when the words and symbols of ‘Rex’ and ‘New Orleans Mardi Gras’ are used in the same context, that can only mean one entity, that of the Rex Organization and its 142 year history.”
As part of the settlement, King Rex Spirits also will donate $1,000 to the Pro Bono Publico Foundation, the Rex Organization’s public education charity.