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

US Copyright Office set to RAISE FEES in early 2013 Reply

The US Copyright Office is planning to raise the cost for filing a claim to register works for copyright registration early next year. So, you have plenty of time (a good 9 months) to make the most of the current $35 copyright registration fee.

A $10 fee increase has been proposed for single authors filing an online registration for a single work of their own. And a slightly higher fee increase of $30 has been proposed for works made for hire (ie companies and entities that own and register works of others including employees)

US Copyright Office Registration (*proposed new fees in 2013)

  • 1 author, 1 work (same claimant not a work made for hire, eCO filing).. now-$35/New fee* $45
  • All other claims eCO filing (including work for hire) .. now-$35/New fee* $64
  • Forms PA, SR, TX, VA, SE (paper filing) .. now-$65/New fee* $100

The US Copyright Office explains that these proposed fee increases are necessary to cover a higher percentage of registration costs, while still being in line with its mission to keep the copyright registration accessible and affordable. To be honest, I think it makes sense. I appreciate the cost being lower for artists, writers, musicians and creators registering their own work.

Click here for the entire chart of the US Copyright Office’s Schedule of Proposed Fees. From now through 5:00pm EST on May 14, 2012 the US Copyright Office is accepting comments on the proposed fee schedules at http://www.copyright.gov/docs/newfees/comments/

Take advantage of the $35 registration fee while you can! (you’ve got the rest of 2012!)

See also: The official notice issued by the Library of Congress regarding the proposed fee increase: http://www.copyright.gov/fedreg/2012/77fr18742.pdf. The Registrations highlighted in this posting are just 2 of the 40+ Registration, Recordation and Other Service fees being adjusted by the US Copyright Office’s proposed fee changes; www.kasterlegal.com.

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

vk@kasterlegal.com