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I enjoy a fine bottle of liquor. Not so much for elixir within, but because such care and artistry is involved with the presentation of the bottle, labels, and even the seal around the cap. I have dozens of bottles of liquor at home, but rarely enjoy more than a drink per week. I just enjoy looking at them, having them around, possessing them.
In a recent case out of the 6th U.S. Circuit Court of Appeals, the court held that Maker’s Mark bourbon can enforce its trademark on the red dripping wax seal on its bottles and Jose Cuervo (and others) may not. The Court’s colorful opinion begins by quoting and acknowledging the wisdom of the writing of Justice Hugo Black, who wrote “I was brought up to believe that Scotch whisky would need a tax preference to survive in competition with Kentucky bourbon.” Dep’t of Revenue v. James B. Beam Distilling Co., 377 U.S. 341, 348-49 (1964) (Black, J., dissenting).
Anyone who has seen a bottle of Maker’s Mark knows the temptation. You just want to touch that shiny, rubbery, and oh-so-red wax with its I-don’t-give-a-damn drips around the neck of the bottle.
The Court, acknowledging bourbon’s “unique place in American culture and commerce,” affirmed Maker’s Mark’s mark, holding that Maker’s Mark has an “extremely strong” trademark deserving protection. This isn’t the first time Kentucky bourbon has beaten tequila in court. Jim Beam beat Cuervo last year as well. Justice served.
Cuervo used the dripping red wax on its tequila from 1997 to 2003, when they were enjoined by Maker’s Mark. Cuervo counter sued to invalidate Maker’s marks and lost. The recent decision affirmed the District Court’s holding.
The dispute provides a corollary into common issues in trademark cases, whether something claimed as a mark is (here, a wax seal) is “functional” in its application — which would invalidate the trademark; and whether the using the mark on two different products would be confusing to customers (here, whether tequila bottles would be confused for bourbon bottles).
Without question, the wax seal has a practical role, but there are many way to seal a bottle of bourbon. Here, the primary consideration of the wax seal is aesthetic. Furthermore, it is truly what Maker’s Mark is known for, according to the Court, it is a “hallmark” of Maker’s Mark, and has been on the bottles since 1958 and has been a registered trademark since 1985.
The case is Maker’s Mark Distillery Inc v. Diageo North America Inc et al, , Nos. 10-5508, 10-5586, 10-5819. I recommend it, not least for the historical account of Bourbon Whiskey.