“All bourbon is whiskey, but not all whiskey is bourbon.” So begins an especially amusing opinion in which the the Sixth Circuit gives Jose Cuervo a history lesson on one of the pillar’s of American society: bourbon. It is an especially American concoction, Judge Martin of Kentucky observes, one that has been enjoyed since 1774 by everyone from Elijah Craig to Ulysses S. Grant, who apparently had a preference for Old Crow.
Plaintiff Maker’s Mark Distillery, Inc. has been sealing its bottles with red wax since the 1950’s, which it registered as trademark in 1985 (Reg. No. 1469925). In 1997, the parent company for Jose Cuervo began using a red sealing wax on its special edition “Riserva de la Familia” tequila, shown here. Maker’s Mark took exception to the use of the red sealing wax and, after Jose Cuervo refused to change the design, filed suit for trademark infringement in 2003.
Now, most people might be reluctant to challenge the strength and recognition of Maker’s Mark’s trade dress in a U.S. District Court in western Kentucky; but hey, too much tequila can make a man do strange things sometimes. At least Jose Cuervo was sophisticated enough to request a bench trial, taking out of play the risk that it would end up with 12 bourbon-loving Kentucky jurors. In a shocking turn of events, the district court found that Maker’s Mark’s registered trademark consisting of its signature trade dress element – a red dripping wax seal – was valid and infringed and enjoined Jose Cuervo from using any similar design. The Sixth Circuit agreed and upheld the district court’s award of costs to Maker’s Mark.
Trade dress is an often unnoticed, but highly valuable form of intellectual property. Recognized as a “symbol” or “device” under the Lanham Act (15 U.S.C. § 1052), trade dress typically encompasses the actual shape or design of a product or its packaging. Some famous examples include the Coca-Cola bottle or Tiffany’s blue box. Unlike traditional trademarks, trade dress must have acquired distinctiveness and it cannot be “functional.” For example, if you see a small blue box wrapped in white ribbon, you don’t have to see the Tiffany’s mark before knowing where it came from. Showing this level of recognition at trial can require a substantial amount of evidence. In this case, the Court found that Maker’s Mark’s fifty years of advertising and substantial sales were enough to satisfy the requirement. It also did not hurt that in 2002 Business Week declared the Maker’s Mark’s seal “one of the most recognizable in the world.”
So next time you go to buy bourbon be rest assured that if you get the bottle sealed in red wax, it’s going to be a Maker’s Mark.