Maker’s Mark’s “Mark” Is Protected

makers-mark-bourbon 2The U.S. Court of Appeals for the Sixth Circuit held that the red wax seal on every bottle of Maker’s Mark bourbon is a protected “trade dress.”  The case involved a dispute between Maker’s Mark bourbon and Jose Cuervo tequila—particularly, Cuervo’s premium tequila Reserva de la Familia—concerning the wax seal on both bottles of liquor.

According to Judge Boyce Martin Jr.’s review, “[t]he Samuels family, founder of the Maker’s Mark distillery in Loretto, Kentucky, has produced whiskey in Kentucky nearly continuously from the eighteenth century through today.”  In 1953, Bill Samuels, Sr. formulated the recipe for the Maker’s Mark bourbon we know today.  Bill Samuels, Sr.’s wife, Margie, “conceived of the red dripping wax seal and used the family deep fryer to perfect the process of applying it.”  Since 1958, the company bottled bourbon for sale under the Maker’s Mark name and has used the red dripping wax seal on its Maker’s Mark bourbon bottles.

In 1985, Maker’s Mark registered a trademark for the dripping wax seal describing its trade dress as a “wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern.”  The trademark description never mentioned the color of the wax but Maker’s Mark sought to enforce its trademark as applied only to the red dripping wax seal.

Jose Cuevo began marketing its premium tequila, Reserva de la Familia, in 1995 with a “straight-edged” red wax seal which was later altered in 2001 to a freeform, irregular red wax seal.  After Maker’s Mark sought to enforce its trademark in 2003, Cuervo reverted to the straight-edged red wax seal.

As reported on the Wall Street Journal, “[t]he ruling gave Judge Martin an opportunity to talk at length about the history of bourbon — an opportunity he clearly relished.”  In his opening, Judge Martin offered some interesting “sociopolitical” commentary on bourbon’s place in the United States:

Justice Hugo Black once wrote, “I was brought up to believe that Scotch whisky would need a tax preference to survive in competition with Kentucky bourbon.”  While there may be some truth to Justice Black’s statement that paints Kentucky bourbon as such an economic force that its competitors need government protection or preference to compete with it, it does not mean a Kentucky bourbon distiller may not also avail itself of our laws to protect its assets.

Boulder Business AttorneysWhile I don’t necessarily agree with Justice Black’s whimsical speculation about the necessity of tax protection for Scotch Whiskey, I do agree with his depiction of the lofty position of bourbon in comparison.

The essence of the legal argument by Maker’s Mark was “confusion of sponsorship”—namely that while the goods do not directly compete and are unrelated enough that no inference arises that they originated from the same source, the similarity of the trademarks suggests a connection between the sources.  Among the factors balanced, the court found that the relatedness of the goods favored Cuervo in that, while both products were part of high-end distilled spirits category, Cuervo was priced around $100.00 compared to $24.00 for Maker’s Mark bourbon.  However, the court found the strength of Maker’s Mark’s mark, the dripped red wax seal, was “extremely strong.”  After assessing a number of factors as to the likelihood of consumer confusion for a trademark infringement claim, the Sixth Circuit held that there was in fact a likelihood of consumer confusion between the two products and therefore Cuervo had infringed Maker’s Mark’s trademark.

In my partial opinion, as a Maker’s Mark Ambassador and a lover of Maker’s Mark bourbon, the Sixth Circuit correctly decided the issue.  Even before becoming a fan of Maker’s Mark bourbon, the red wax seal was instantly identifiable for the brand.  While courts applying “balancing tests” can break either way when applying the factors involved, here they broke the right way.

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