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.
A major benefit of registering a Trademark is the exclusive right to use the Trademark, which comes with registration. Ownership of a registered Trademark bestows an exclusive right to use the Trademark with or on ALL similar goods and services. This exclusive right restricts other people, companies and businesses from using your Trademarked term or logo on similar goods and services. This exclusive right can be a powerful tool in the marketplace.
For example, POPSICLE is a registered Trademark of Unilever and only Unilever has the authority to use the word POPSICLE when selling, advertising and promoting frozen treats on a stick. This means that the word POPSICLE is off limits to any other person or company selling frozen treats on a stick. POPSICLE cannot be used on other companies’ product names, blogs, napkins, merchandising, or advertising. As you can see, this carries a lot of weight in the market place against competitors. The unauthorized use of the mark POPSICLE recently put a small shop in Brooklyn in a bind when they started making and selling a product called ‘People’s Popsicles.’ Since the shop did not have permission from Unilever to use the POPSICLE trademark, the shop had to rename their product, print new merchandising, and erase every use of POPSICLE from their menu and blog.
Exclusive use rights that come with owning a registered Trademark are powerful. Don’t underestimate their value in the market place.
BY: Vanessa Kaster, Esq., LL.M.
More information on this subject: ‘NAME Brand’ – Using your Name as a Brand and Trademark; Is Unilever’s Popsicle Trademark Melting Away? at http://www.kasterlegal.com/storage/NYSBA%20Electronically%20In%20Touch.%20%20Article%20by%20Vanessa%20Kaster.pdf and http://www.nysba.org/Content/NavigationMenu24/ElectronicallyInTouch/2010Issues/September2010/default.htm; @iplegalfreebies and www.kasterlegal.com
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