In Maker’s Mark v. Diageo North America, [read the decision here], the Sixth Circuit Court of Appeals wrote an entertaining opinion that even a non-lawyer will enjoy. This toast to Kentucky bourbon blends history and law in an enjoyable manner. The nineteen page opinion discusses whether the red dripping-wax seal found on every bottle of Maker’s Mark was a mark that could be protected as a trademark, and whether a brand of tequila that employed a similar wax seal infringed on that mark.
It is obvious that the Court had a great deal of interest in bourbon, and that it had dedicated as much time telling the story of Bourbon as it did in analyzing the legal issues of the case. Issued last week, the opinion explores the history of Bourbon from its creation at Ft. Harrod, Kentucky in 1774 to the emergence of the famous red dripping-wax seal found on bottles Maker’s Mark bourbon. The famous seal was created by Margie Samuels using the family’s deep fryer, and was first used on a Maker’s Mark bottle in 1958. It was ultimately registered as a trademark for the dripping-wax element of its trade dress in 1985.
The villain of this legal dispute is Jose Cuervo, which developed a premium tequila under the name “Reserva de la Familia” that incorporated a red wax seal. By 2001, Cuervo began marketing this tequila in the United States with a red dripping-wax seal over the cap of the bottle. Maker’s Mark sued claiming that Cuervo’s product infringed upon its trademark. Cuervo counterclaimed for cancellation of the mark.
A trademark is usually identified by the symbol ® and generally shows that a particular mark is unique. Trade dress is related to the physical appearance of a product. By law, such marks are afforded legal protections to secure their value. A mark, however, may be invalid if it is considered functional. This concept is more easily understood to mean that if there is no comparable alternative then an item may not be given trademark protections. Also, trademark protection may be denied where it would limit market competition.
Cuervo argued that the red dripping-wax was “aesthetically functional.” This means that although an attractive feature related to the physical appearance of the bottle, it is also a functional feature and not one for which a person could seek a trademark. The Court, however, concluded it was not functional finding that there were a number of ways to design around the seal (it did not limit market competition), that the seal could be blue or pink (a comparable alternative), and that it did not need to be in the form of dripping wax.
Instead, the Court found that the red dripping-wax was an “extremely strong” mark and that the Reserva de la Familia red wax seal infringed on it. So, in this battle of the bottles, Kentucky emerged the victor. We hope the attorneys for Maker’s Mark toasted the Sixth Circuit for its favorable ruling.
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