Did you realize that the red dripping wax seal on bottles of Makers’s Mark is a registered trademark of the brand? Well, it is… and the US Court of Appeals for the 6th Circuit (in Kentucky) upheld the famous trademark earlier this month.
The trademarked red dripping wax seal (US Registration No. 1370465) was challenged when tequila maker Jose Cuervo started using a similar red dripping wax seal on bottles of premium tequila. Cuervo’s use of a red dripping wax seal prompted a lawsuit to determine the enforceability and validity of the trademarked seal. In the case, Cuervo challenged the registration of the red dripping wax seal on the basis of “functionality.” Interestingly, under US Trademark law, a registered mark may be found invalid if it is “functional.” A trademark is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” To evaluate functionality, courts consider if “it would be difficult or costly for competitors to design around” the mark (comparable alternatives test) or if competitors are at a significant disadvantaged by being prevented to use a red dripping wax (the effective competition test). In this case the courts held that the registered trademark was not “functional” and as a consequence is an enforceable trademark.
(The court also considered and evaluated several other factors including: the strength of the mark; the length of time the mark had been registered, relatedness of the two parties goods, assessed similarity of the wax seals used by both parties and actual confusion).
The court held that the trademarked red dripping wax seal was enforceable. (Also included in the court’s opinion is an impressively romantic history of Kentucky Bourbon. Including fun facts about Maker’s Mark… for example, did you know that the red dripping wax seal was first applied using the family deep frier?)
See also the case: Maker’s Mark Distillery, Inc. v. Diageo North America, Inc. , 10-5819 (6th Cir. 2012); http://www.ca6.uscourts.gov/opinions.pdf/12a0126p-06.pdf; http://courtlistener.com; www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.
BY: Vanessa Kaster, Esq., LL.M.
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