Maker's Mark Bourbon Has Enforceable Trade Dress Rights in Dripping Wax Seal

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Maker's Mark Distillery Inc. v. Diageo North America Inc., 6th Cir., No. 10-5508, 5/9/12


Case Summary:The Sixth Circuit affirms a federal district court's ruling that the maker of Maker's Mark Kentucky bourbon has enforceable trade dress rights in its dripping red wax seal against the maker of Jose Cuervo tequila.


• Case Summary:The Sixth Circuit affirms a federal district court's ruling that the maker of Maker's Mark Kentucky bourbon has enforceable trade dress rights in its dripping red wax seal against the maker of Jose Cuervo tequila.  



By Anandashankar Mazumdar  

A federal district court did not err in finding that the maker of Jose Cuervo tequila had infringed the valid trademark of the producer of Maker's Mark bourbon whiskey when it sealed the caps of bottles of its tequila with dripping red wax, the U.S. Court of Appeals for the Sixth Circuit ruled May 9 (Maker's Mark Distillery Inc. v. Diageo North America Inc., 6th Cir., No. 10-5508, 5/9/12).

Affirming a judgment in favor of Maker's Mark, the court found no clear error in the lower court's findings or evaluation of the eight factors of the likelihood of confusion test.

Bourbon Maker Claims Rights in Wax Seal.

Maker's Mark Distillery Inc. is a distiller of Kentucky bourbon whiskey based in Loretto, Ky. Since its inception in 1958, the caps of bottles of Maker's Mark bourbon have been sealed with dripping red wax. In 1985, Maker's Mark registered the dripping wax seal as a trademark with the Patent and Trademark Office. In 2003, Maker's Mark obtained another registration on the wax seal, this time explicitly mentioning the color red.

Diageo North America Inc. is the U.S. distributor of Jose Cuervo tequila extract, a blue agave spirit, which has been produced by Tequila Cuervo la Rojeña S.A. de C.V. of Tequila, Mexico, since the late 18th century. In the late 1990s, to commemorate its 200th anniversary, Jose Cuervo began issuing bottles of a new tequila, Reserva de la Familia, with dripping red wax seals. In 2001, Cuervo began selling Reserva in the United States.

Maker's Mark sued in 2003, alleging that use of the dripping red wax seal constituted trademark infringement, false designation of origin, and trademark dilution under federal law and unfair competition and common law trademark infringement under Kentucky state law. Some time after the initiation of the action, Cuervo changed to a straight-edged wax seal, which it had originally used on the Reserva wax seals before adopting the dripping wax style.

After a bench trial, Judge John G. Heyburn II of the U.S. District Court for the Western District of Kentucky ruled that Cuervo had infringed the valid trademark of Maker's Mark. 703 F. Supp. 2d 671, 97 USPQ2d 1780 (W.D. Ky. 2010).

Cuervo appealed, arguing that the red dripping wax seal was aesthetically functional and thus Maker's Mark could not assert exclusive rights in its use.

History, Traditions of Bourbon Recapped.

Judge Boyce F. Martin Jr. commenced his opinion with a detailed review of the history and traditions surrounding the manufacturing and marketing of Kentucky bourbon whiskey, and specifically, the “central place in the modern story of bourbon” represented by Maker's Mark, before concluding that there was no clear error in the district court's ruling.

The court noted that there are at least two tests for aesthetic functionality and that the Sixth Circuit's jurisprudence has not adopted either one. Indeed, the court said that it had not explicitly adopted the aesthetic functionality doctrine in the first place. However, the court said, it was not required to resolve these questions in the context of this case.

The first test, from dicta in Traffix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), asks whether allowing the plaintiff to have exclusive rights in the design in question would result in “a significant non-reputation-related disadvantage” to its competitors.

On the other hand, Antioch Co. v. Western Trimming Corp., 347 F.3d 150, 68 USPQ2d 1673 (6th Cir. 2003), states that “where an aesthetic feature (like color), serves a significant function … courts should examine whether the exclusive use of that feature by one supplier would interfere with legitimate competition.”

In other words, one test asks whether the defendant could design around the claimed trade dress by using comparable alternatives without significant effort or cost, and the other asks whether denying use of the trade dress would put the defendant at a disadvantage to the point that it could not effectively compete.

The court said:  

Even assuming we were to recognize [the] aesthetic functionality doctrine, regardless of which test we would apply under that doctrine, the outcome is the same. Under either test, Cuervo's appeal on this claim does not succeed. The district court was not convinced “that it would be difficult or costly for competitors to design around” the mark and we do not disagree. There is more than one way to seal a bottle with wax to make it look appealing, and so Cuervo fails the comparable alternatives test. As to the effective competition test, the district court found that “red wax is not the only pleasing color of wax … nor does it put competitors at a significant non-reputation related disadvantage to be prevented from using red dripping wax.” The district court's findings are not clearly erroneous, and, based on those findings, Cuervo fails either test.  



Thus, the court said, even if the aesthetic functionality doctrine was valid in this circuit, Cuervo would have failed to show that the dripping red wax seal was aesthetically functional.

Likelihood of Confusion Factors Analyzed.

Next, the court reviewed the factual findings made by the lower court under the eight-factor test for likelihood of confusion as set forth by Frisch's Restaurants Inc. v. Elby's Big Boy of Steubenville Inc., 670 F.2d 642, 214 USPQ 15 (6th Cir. 1982).

Cuervo specifically disputed the lower court's findings regarding three of the eight factors.

Under the first factor, the strength of the plaintiff's mark, the court found appropriate the district court's finding that the dripping red wax seal constituted a strong mark, through its uniqueness, its distinctiveness, and its 50-year history of use by the whiskey distillery. This finding was supported by evidence of Maker's Mark's extensive advertising reinforcing the mark.

The court agreed that any evidence of use of such a seal by third parties did not upset the ruling on strength because such use was “limited and unconvincing because it concerned seals used on all distilled spirits,” rather than being focused on the relevant market.

Furthermore, the court rejected Cuervo's contention that the district court, in considering strength, improperly considered surveys of too broad a market of drinkers of distilled spirits generally rather than those who specifically were likely to buy Cuervo tequila. According to the court, while this evidence was taken into account, the district court did not rely too heavily on it, and “based its holding primarily on the seal's 'unique design and [Maker's Mark's] singular marketing efforts.' ”

House Marks Do Not Weigh Heavily Here.

Turning to the factor addressing the similarity of the Cuervo trade dress to Maker's Mark's trade dress, Cuervo said that the appearance of the companies' house marks on the bottles significantly reduced any similarity created by the use of dripping red wax seals.

However, the court said that the appearance of a house mark does not always have significant weight in the analysis of similarity, although it is a factor to be considered. Its weight and importance depended on the facts of the particular case in question.

In this case, the court noted the district court's focus on factors that diminished the significance of the house marks: (1) the fact that consumers are largely “unaware of the affiliations between brands of distilled spirits, and that some companies produce multiple types of distilled spirits”; and (2) that house marks are generally more significant in “a palming off case than in an association case.”

Finally, the court rejected Cuervo's argument that the district court improperly weighed as neutral the fact that neither side had produced meaningful evidence of actual confusion. According to Cuervo, the lack of actual confusion should have weighed in its own favor.

However, the court said, the lack of actual confusion occurred in the context that Cuervo's accused tequila trade dress “was sold for a short time and in limited quantities; under these circumstances, it is reasonable that no meaningful evidence of actual confusion was available.”

Having rejected Cuervo's criticisms of the lower court's consideration of specific factors in the likelihood of confusion analysis, the court then weighed all eight factors. Noting that the majority--including strength, relatedness of the goods, similarity, and marketing channels--favored Maker's Mark, the court concluded that the “balance of the factors compels a finding of infringement.”

The court thus affirmed the district court's ruling of trade dress infringement and its award of an injunction in Maker's Mark's favor.

The court's opinion was joined by Judges Karen Nelson Moore and Deborah L. Cook.

Cuervo was represented by Michael Aschen of Abelman Frayne & Schwab, New York. Maker's Mark was represented by Edward T. Colbert of Kenyon & Kenyon, Washington, D.C.

By Anandashankar Mazumdar  

Opinion at

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