Stamp of trademark approval for dripping wax seal on Maker’s Mark Bourbon 1

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.

vk@kasterlegal.com

Avoid Trademark Rejection for Descriptiveness Reply

Descriptiveness is a slightly unexpected and common pitfall when it comes to registering a trademark.  If your trademark is descriptive, meaning that your mark merely describes your goods and services in a common and generic way, then trademark registration will be difficult  unless modifications are made to enhance the uniqueness of your mark.

For example, if you have a Doughnut shop where you sell hot doughnuts and you submit an application to register the trademark ‘hot doughnuts’ …your application will likely be denied because, your mark merely describes your goods and services in a common way.  [i.e. – a Google search on ‘hot doughnuts’ returns over  1,740,000 results in 0.18 seconds and these results are linked to doughnut shops and bakeries all over the world that also use the phrase ‘hot doughnuts’ to describe what they sell.]  Since ‘hot doughnuts’ is commonly used to describe doughnuts, it is too literal of a description to be registered as a trademark for a shop selling hot doughnuts.

Fire up your creative juices and make your trademark unique and not merely descriptive.

See also: more info on recent disputes involving this issue: Coppola and his family trust have sued a small restaurant in Novato, CA –> http://wp.me/p10nNq-kz and designer Louboutin’s Red Sole Shoes–> http://wp.me/p10nNq-cy ; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

‘NAME Brand’ – Using your name as a brand and trademark 3

It is not uncommon for businesses to be named after their founders… nor is it uncommon for famous celebrities and politicians to create businesses using their names.   In both instances, a person’s name can become their brand and trademark.  For a person’s name to be registered as a trademark it must be associated with goods or services in commerce (or soon to be in commerce).

For example, Sarah Palin recently filed a trademark application with the U.S. Patent and Trademark Office to register her name as a trademark.  The service that she is using her name to sell and promote is a website featuring political issues and motivational speaking.

Sarah Palin is certainly not the first politician to trademark their name.  In fact, one of the fist U.S. Trademarks was granted to Paul Revere as a trademark for his pots and pans.  The Revere cookware lives on today.

The only downside to using your own name as a trademark is that if you sell your business and trademarks… then you sell the commercial use of your name in association with the type of business you established.  (…This may not be much of a downside if you negotiate a good price.)

For more on the power of trademarks-> Owning a Trademark = Power (Exclusive Use of a Trademark)www.kasterlegal.com  and vk@kasterlegal.com

BY: Vanessa Kaster, Esq., LL.M.

 

Owning a Trademark = Power (Exclusive Use of a Trademark) 7

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.

vk@kasterlegal.com

More information on this subject: ‘NAME Brand’ – Using your Name as a Brand and TrademarkIs 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