Any company involved in a trademark lawsuit hopes that its lawyers will wax lyrical in court. And for a well-known distillery, it seems that this is exactly what has happened.
In a ruling this month, the US Court of Appeals for the Sixth Circuit held that the red, wax seal that covers the stopper on bottles of Maker’s Mark bourbon is a protected trademark that must be used exclusively by that brand. The ruling follows a lawsuit in which Maker’s Mark Distillery Inc sought to prevent a similar seal from being used on bottles of Jose Cuervo tequila.
For Maker’s Mark, is was not the simple fact that the tequila brand had used a seal, so much as what the seal looked like. Until 2001, Cuervo bottles had been crowned with a straight-edge seal – but that year opted for an uneven style in which the wax looked like it was ‘dripping’ down the bottle neck. As this was the established style of Maker’s Mark seals – trademarked in 1985 – the bourbon maker sued. Cuervo responded with a counterclaim, arguing that Maker’s Mark’s trademark rights in the seal should be struck down under the US functionality doctrine, which holds that trademarks should not be granted on products’ functional features.
Following proceedings at the District Court for the Western District of Kentucky, Judge John Heyburn II ruled in favour of Maker’s Mark on the dual points of infringement and trademark validity. This was upheld on appeal at the Sixth Circuit. In their ruling, the three appeal judges noted: ‘The company has bottled bourbon for commercial sale under the Maker’s Mark name, and has used a red dripping-wax seal on its Maker’s Mark bourbon bottles, since 1958. Maker’s Mark – and craft bourbon generally – garnered national attention when the Wall Street Journal published a front-page article about the bourbon, the red dripping-wax seal, and the family behind it [“Maker’s mark goes against the grain to make its mark”, by David P Garino, 1980].’
Furthermore, the appeal judges noted, a 2002 Business Week report declared the dripping-wax seal ‘one of the most recognisable branding symbols in the world’. Six years later, the CBS Sunday Morning show referred to the factory process for applying the feature as the ‘famous dip in red sealing wax’. These findings, said the judges, ‘support the district court’s ultimate conclusion regarding the breadth of market recognition of Maker’s Mark’s trademarked, red dripping-wax seal.’
On the functionality point, the judges wrote: ‘The district court was not convinced [by Cuervo’s argument] “that it would be difficult or costly for competitors to design around” the mark and we do not disagree. There is more than one way to seal a bottle with wax to make it look appealing.’
Maker’s Mark attorney Edward Colbert said: ‘The decision shows that if a company develops a recognisable symbol, competitors are not allowed to free-ride by adopting similar symbols to promote their products. It is important not just for the liquor industry, but for any business that adopts an attractive symbol to identify its products.’ A Cuervo representative said that, while the decision was disappointing, it would have ‘no practical effect’ on the brand going forward as it has not used dripping-wax seals since 2004.