The 6th Circuit ruled yesterday that the red dripping-wax seal that has appeared on bottles of Maker’s Mark bourbon since 1958 is an “extremely strong” trademark that deserves protection.
In Maker’s Mark Distillery Inc. v. Diageo North America Inc. et al, Loretto, Ky.-based Maker’s Mark sued Mexico-based Casa Cuervo and its U.S. distributor. The bourbon maker claimed that a dripping-wax seal that Cuervo used on the bottles of one of its tequilas infringed on Maker’s Mark’s 1985 seal trademark. A district judge ruled in April 2010 that Cuervo’s drippy-styled seal did infringe, and it forbade the company from using it. Yesterday, the 6th Circuit upheld that ruling.
“The 6th Circuit’s ruling demonstrates that certain design elements can be an important—and even iconic—part of a product’s brand image, and that diligent companies can create protectable trade dress rights in those design elements that will be protected by the courts,” David Ter Molen, a partner at Freeborn & Peters, told InsideCounsel. “Generally, it can be difficult to create protectable trade dress rights, but the benefits of doing so can be great. Here, Maker’s Mark succeeded by recognizing early on the important relationship between its dripping red wax seal and the public image of its product. It then obtained a federal trademark registration for that element, which became incontestable after five years, with a presumption of validity. That registration was an important part of Maker’s Mark's success.”