I am pleased that a recent case gives me the opportunity to discuss two of my favorite things — whiskey and trade dress, an often overlooked and highly underrated form of intellectual property.
Trade dress is actually a kind of trademark, but the analysis is very different. It falls under the definition of “symbol” or “device” under §2 of the Lanham Act (15 U.S.C. § 1052). Trade dress is also discussed thoroughly in Chapter 1202.2 of the Trademark Manual of Examining Procedure (“TMEP”). Where a trademark is words or symbols that function to identify the source of goods, trade dress is the actual shape or design of the product or its packaging. It is the image as a whole and can include shape, color, size, and other thematic elements. While a single name or logo can be a trademark, trade dress is better thought of as the sum of an item’s parts. For example, the Coca-Cola bottle, the Rolls-Royce front grill, and the overall appearance of restaurants like IHop and McDonalds are all protected under trade dress, meaning that not only is it impermissible to copy the name of the good, but also the appearance of the good as well.
In order to qualify for protection as trade dress, the thematic elements must have acquired distinctiveness or secondary meaning and they must not be functional. With respect to acquired distinctiveness, the public must associate the thematic elements of the alleged trade dress with the source of goods. For example, if the label were removed from, say the Coca-Cola bottle, the carbonated beverage consuming public would still recognize the bottle as containing Coca-Cola’s beverage and not some other soft drink. Showing this level of distinctiveness typically requires a fair amount of evidence.
The second prong, functionality, is a little trickier. It’s a complex issue that merits a separate discussion but, for our purposes, an element is functional if it “is essential to the use or purpose of the article or if it affects the cost or quality of the article. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); Qualitex Co v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1, 4, n.10 (1982). This is a fact dependent analysis and there are several factors that are considered. To give an example, the Coca-Cola bottle as a beverage container is not protectable because its function is to hold a liquid, therefore, permitting trademark protection would leave the marketplace no viable alternative for beverage holding. Contrast with the bottle’s unique shape and ribbing, which is protectable because those elements not contribute to the function of containing and do not provide a competitive edge. Its important to remember that if your trade dress is ultimately deemed functional, no amount of acquired distinctiveness will save it from being relegated to the trademark registration bone yard.
Which brings us to the recent gem of an opinion from the Sixth Circuit. Maker’s Mark has been using red sealing wax on its bourbon bottles since the 1950’s, which it trademarked in 1985 (Reg. No. 1469925). Then, in 1997, the company making Jose Cuervo brand tequila started using red sealing wax on some of its special bottles, which were sold beginning in 2001. Needless to say, the Kentucky bourbon company took issue with the tequila company’s use of dripping red sealing wax and requested that such practice immediately stop. Cuervo said “Nope”, so in 2003, Maker’s Mark sued them. It appears that Cuervo stopped using the dripping wax seal in favor of a straight edged seal around 2006, but it countersued to cancel the mark.
Cuervo argued that there was no way there could be consumer confusion over the wax seal in the context of the tequila-drinking marketplace. They make a point- who could ever get bourbon and tequila confused? With the recent events of Cinco de Mayo and the Kentucky Derby, everybody should know that tequila goes in a margarita and bourbon goes in a mint julep. But I digress. Remember we’re talking trade dress, so the focus here is whether the red dripping wax seal by itself is indicative of Maker’s Mark bourbon and that the seal by itself has gone out of the functional realm and is now a source indicator for that particular brand. The United States Trademark Office apparently thought so back in 1985 (Reg. No. 1469925) and the Sixth Circuit Court of Appeals agreed earlier this week.
Cuervo argued that the dripping red wax is functional as a seal for the bottle, which renders it unenforceable. The court disagreed, pointing out that it would not be difficult or costly for competitors to design around a red wax seal and finding that “red wax is not the only pleasing color of wax”. The court also upheld the district court’s conclusion that the strength of the red seal wax trademark was significant. In addition to being incontestable, according to the court, the seal is inherently distinctive based on its uniqueness and ability to draw in the customer in an unusual manner. The court also noted the strong level of secondary meaning in Maker’s seal through fifty years of advertising (which focuses on the seal) and consumer recognition.
One of the best ways to weaken a mark is the widespread unchecked use of it by others. And one of the best ways to weaken a confusion-based argument is the presence of a prominent label. Cuervo was right to point out use of similar seals by other distillers and the prominence of its label, but the court remained unconvinced. It didn’t help that Business Week declared Maker’s seal “one of the most recognizable in the world” in 2002. In fairness to Cuervo, though, it wasn’t a total smack-down; different facts may have led to a different result and it appears that Maker’s extensive advertising and widespread recognition of the seal was the key here.
The concept of how broad the protection Maker’s seal now has is not lost on me. Cuervo deserves credit for making good arguments against the mark, but they should have picked a softer target. Moving forward, it looks like distillers wont be forbidden from sealing their bottles in wax, but it better not be red dripping wax. In fact, Maker’s conceded that it only sought to enforce the mark as applied to red wax. One could argue that this ruling gives trade protection to a functional item as well as a color and therefore deprives distillers an opportunity to adequately seal their bottles. I would have liked to see the color issue fleshed out more, but there wasn’t really a need this time. Maker’s Mark trade dress is so strong that one can see that red dripping wax from across the room and immediately know whose product it is. I guess if there’s a silver lining for tequila enthusiasts, can you imagine what a 2001 dripping red wax sealed bottle of Reserva goes for these days?