California - Last week Saeilo Enterprises Inc., manufacturer of the Tommy Gun machine gun, filed a trademark infringement lawsuit against Alphonse Capone Enterprises Inc. in an attempt to stop the manufacture and sale of a new brand of vodka under the "Tommy Guns" name.
Saeilo Enterprises has been in the business of machining metal parts used in the aerospace, automotive, computer, electronics and medical industries since 1981. In 1994, Saeilo formed its Kahr Arms division. Then in 1999, Kahr Arms bought Auto-Ordnance, the maker of the infamous "Tommy Gun" firearm, and continued the manufacture of the gun.
Saeilo is also the owner of the TOMMY GUN trademark, Registration No. 2,885,628 for firearms. The trademark has been in continuous use since 1920. Saeilo also owns a separate TOMMY GUN trademark covering apparel.
Alphonse Capone Enterprises, which also sells cigars, operates a restaurant and bar which purports to be an old hideout frequented by Al Capone in the late 1920's.
Saeilo is trying to shut down Alphonse Capone's vodka operation and has filed a complaint in New York Federal Court. The complaint cites 10 causes of action against Alphonse, including trademark infringement, trademark dilution, false designation of origin, trade dress infringement, deceptive trade practices, and unfair competition. Saeilo is alleging irreparable harm caused by Alphonse Capone Enterprises and is seeking a permanent injunction and an award of damages and attorney's fees.
The accusation of trade dress infringement stems from the fact that the Tommy Guns vodka bottle is an exact replica of the famous machine gun.
Beyond a permanent injunction, Saeilo is seeking an order forcing Alphonse Capone to turn over all bottles in its possession to Saeilo for destruction. It is not clear whether the vodka has been made available for sale as of yet, but information about the vodka can be found on the Tommy Guns Vodka website.
In 2011, Saeilo waged a similar lawsuit against Buzz Bee Toys, Inc. of Mt. Laurel, New Jersey who was selling a toy gun similar to the popular submachine gun which used the name "Tommy" on its packaging. The case likely ended in a settlement.