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sku
05-09-2012, 20:58
Today, the Sixth Circuit Court of Appeals affirmed a lower court ruling that Diageo had infringed on Maker's Mark's trademark by using a red wax top on its Casa Cuervo tequila.

The opinion is well written and includes a fair amount of bourbon history with numerous citations to Chuck Cowdery, and the opening line is fantastic.

Interesting stuff!

http://www.ca6.uscourts.gov/opinions.pdf/12a0126p-06.pdf

Bmac
05-09-2012, 22:31
Dude, what's up with Diego, seriously! They're fast becoming the Enron of the spirit industry :hot:

sku
05-10-2012, 02:43
I should note that Mike Veach is also cited.

Just so non-lawyers know, it's a big deal to be cited in a federal appeals court brief, and this court clearly had judges (or clerks) who knew their stuff bourbon-wise.

Gillman
05-10-2012, 06:07
Interesting and certainly a sophisticated analysis.

If I understand the core of what the court is saying, it's that because tequila and bourbon are both in the general class of distilled spirits, it is reasonable to restrict use of the dripping red wax-like coating to Maker's Mark for such spirits because it was reasonable that people might think a tequila packaged that way came from the company which makes Maker's Mark or that the two products were associated in some way. Is that how the lawyers (or others) on the board read it?

Gary

Restaurant man
05-10-2012, 06:20
Interesting and certainly a sophisticated analysis.

If I understand the core of what the court is saying, it's that because tequila and bourbon are both in the general class of distilled spirits, it is reasonable to restrict use of the dripping red wax-like coating to Maker's Mark for such spirits because it was reasonable to think people might think a tequila packaged that way came from the company which makes Maker's Mark or that the two products were associated in some way. Is that how the lawyers (or others) on the board read it?

Gary

Yup. Another lawsuit I thought was imminent was the brand "1800" for tequila. It's in a Jose cuervo type bottle. Then I learned they were owned by the same family. Who by the way is about to sell cuervo to diageo.
I'm just glad the judge refused to grant any damages.

DaveOfAtl
05-10-2012, 06:36
Very interesting opinion. I never worked on anything this cool when I was clerking. Congrats to Chuck on being cited.

smokinjoe
05-10-2012, 06:55
Here's a discussion we had on the subject a couple of years ago:


http://www.straightbourbon.com/forums/showthread.php?t=12860&highlight=makers+marketing

weller_tex
05-10-2012, 07:45
Wow, that's a very cool read..and congrats to Chuck!

clingman71
05-10-2012, 08:12
Interesting and certainly a sophisticated analysis.

If I understand the core of what the court is saying, it's that because tequila and bourbon are both in the general class of distilled spirits, it is reasonable to restrict use of the dripping red wax-like coating to Maker's Mark for such spirits because it was reasonable that people might think a tequila packaged that way came from the company which makes Maker's Mark or that the two products were associated in some way. Is that how the lawyers (or others) on the board read it?

Gary

So is this limited to liquor? My 2012 FFF Dark Lord comes to mind, red wax capped. FFF waxes their RIS and BW with different colors each year to date the bottles.

T Comp
05-10-2012, 08:24
Considering where the Sixth Circuit is I'd say the Diageo boys always had an uphill battle on this one. I won't have the time to read it carefully for a few days. Maybe all those legal fees could have been better spent especially when no damages were awarded?

callmeox
05-10-2012, 09:08
So is this limited to liquor? My 2012 FFF Dark Lord comes to mind, red wax capped. FFF waxes their RIS and BW with different colors each year to date the bottles.

Its not the wax, its the tendrils.

Others can use red wax, it just needs a defined edge.

clingman71
05-10-2012, 09:14
Its not the wax, its the tendrils.
Others can use red wax, it just needs a defined edge.

These beer bottles have wax drips/runs as well, but it seems as though the issue is with other distilled products vs other alcohol products.

Gillman
05-10-2012, 09:19
Also, as I read the decision, it is only - or at least Maker's Mark thus far has only argued - that it is red wax and tendrils that are theirs on distilled spirits, not wax of another color.

Gary

Rutherford
05-10-2012, 09:27
Also, as I read the decision, it is only - or at least Maker's Mark thus far has only argued - that it is red wax and tendrils that are theirs on distilled spirits, not wax of another color.

Gary

When touring Heaven Hill back in December, we saw the EW single barrel line. The tour guide mentioned that, although their wax is black, the workers had to dip the bottles in a method to avoid drips so that they did not infringe upon the trade dress of some un-named company.

Maker's seems to be protecting 1. red wax and 2. wax drips for distilled spirits only.

Gillman
05-10-2012, 09:47
That's as I read it too, but I'd think too that anyone proposing to use wax drips of any color or kind, for any alcohol, should get good advice first from a good IP lawyer! Better safe than sorry...

Gary

LostBottle
05-10-2012, 09:56
I can see an argument being made for red wax drips on whiskey, but is Makers Mark really trying to restrict the use of any color wax drip from any type of distilled spirit? If true, this is asinine and will cause me to never buy another Makers product again - not that I thought it was good bourbon anyway.

sku
05-10-2012, 10:59
I can see an argument being made for red wax drips on whiskey, but is Makers Mark really trying to restrict the use of any color wax drip from any type of distilled spirit? If true, this is asinine and will cause me to never buy another Makers product again - not that I thought it was good bourbon anyway.

They are not. The Maker's trademark is silent as to color but Maker's conceded before the court in this case that it only sought to enforce its trademark as applied to the red dripping wax seal.

LostBottle
05-10-2012, 11:20
They are not. The Maker's trademark is silent as to color but Maker's conceded before the court in this case that it only sought to enforce its trademark as applied to the red dripping wax seal.

Thanks for the clarification, SKU. Good to know that the IP lawyers are showing at least some restraint here.

cowdery
05-10-2012, 11:28
The decision is very nuanced so I hesitate to summarize it here. The purpose of the history section, where I'm cited, was to establish that brand identity and distinctiveness are uniquely significant to the whiskey category due to its history and to previous Federal government actions such as the Pure Food and Drug Act and subsequent Taft Decision. Maker's (Beam) won in the sense that it received no damages but some costs, and most importantly the validity of its trade dress claim was upheld. In the trademark argument itself it gets into some pretty esoteric stuff and will probably be studied for that more than anything else.

However, they did a good job with the history section, it is there for a valid legal purpose, and I'm tickled to have been a part of it.

Brisko
05-10-2012, 14:58
Thanks for the clarification, SKU. Good to know that the IP lawyers are showing at least some restraint here.

On the other side of the coin, Maker's has used other colors of wax, both for special editions and regular products.

AaronWF
05-10-2012, 15:07
On the other side of the coin, Maker's has used other colors of wax, both for special editions and regular products.

I was gonna say, "Quick, someone go claim dibs on all the other colors Maker's likes to charge more for in their limited-edition same-juice dippers!"

sku
05-10-2012, 15:32
On the other side of the coin, Maker's has used other colors of wax, both for special editions and regular products.

And I'm sure they reserve the right to challenge anyone who uses those colors, though as far as I know they have not, likely since such a suit would undoubtedly be weaker since the red dripping wax is the more widely used and has become emblematic of Maker's. Of course, every case turns on its individual facts.

alexandergjones
05-10-2012, 17:19
what about this Salad dressing company. Should they be worried?

http://www.tessemaes.com/

Gillman
05-10-2012, 18:19
I don't think so. As I read the "sponsorship" or association doctrine in the Maker's Mark case, you need a reasonable relationship between the products in question: I don't see it here, i.e., no one could reasonably suppose the sources of the respective products would be related in some way.

If the "dilution" doctrine applied, perhaps an argument could be made, but the court said, again as I read them, that Maker's couldn't benefit from that argument, it wasn't a ground of their decision.

Gary

Restaurant man
05-10-2012, 22:35
The decision is very nuanced so I hesitate to summarize it here. The purpose of the history section, where I'm cited, was to establish that brand identity and distinctiveness are uniquely significant to the whiskey category due to its history and to previous Federal government actions such as the Pure Food and Drug Act and subsequent Taft Decision. Maker's (Beam) won in the sense that it received no damages but some costs, and most importantly the validity of its trade dress claim was upheld. In the trademark argument itself it gets into some pretty esoteric stuff and will probably be studied for that more than anything else.

However, they did a good job with the history section, it is there for a valid legal purpose, and I'm tickled to have been a part of it.

As well you should be sir. This further cements your rightful place in bourbonia!

Restaurant man
05-10-2012, 22:38
I don't think so. As I read the "sponsorship" or association doctrine in the Maker's Mark case, you need a reasonable relationship between the products in question: I don't see it here, i.e., no one could reasonably suppose the sources of the respective products would be related in some way.

If the "dilution" doctrine applied, perhaps an argument could be made, but the court said, again as I read them, that Maker's couldn't benefit from that argument, it wasn't a ground of their decision.

Gary

I've been dripping that red wax on something for a long time and no one has ever sued me. Demo at next GBS meeting?:skep:

Gillman
05-11-2012, 05:20
I want to add my voice to those who were delighted to see Chuck's name mentioned as an authority in the case. And Mike Veach deserves kudos as well.

Gary

T Comp
05-11-2012, 07:02
I want to add my voice to those who were delighted to see Chuck's name mentioned as an authority in the case. And Mike Veach deserves kudos as well.

Gary

Add my voice too :cool: .

jburlowski
05-12-2012, 07:32
what about this Salad dressing company. Should they be worried?

http://www.tessemaes.com/

I bought a bottle of their Lemon Garlic, thinking it was a new flavored bourbon ala Red Stag, Boy, was I pissed that I was misled. :hot:

OTOH, it did taste better than the Red Stag....

smokinjoe
05-12-2012, 08:10
I've been dripping that red wax on something for a long time and no one has ever sued me. Demo at next GBS meeting?:skep:

You're on! We may have to take the show on the road. I mean, who wouldn't pay to see Jimmy's pyrotechnic display, your wax dripping extravaganza, and Josh's projectile vomiting...??? :D

The Boozer
05-12-2012, 11:19
I will also add my congrats to Chuck and Mike. Your insight is always welcome.

mosugoji64
05-13-2012, 22:48
You're on! We may have to take the show on the road. I mean, who wouldn't pay to see Jimmy's pyrotechnic display, your wax dripping extravaganza, and Josh's projectile vomiting...??? :D

Count me in! PM me when the pre-sale starts! :slappin:

smokinjoe
05-14-2012, 08:34
Count me in! PM me when the pre-sale starts! :slappin:

Great! We'll be at Hinkle Fieldhouse over the July 4th Holiday. If you miss that show, we have replaced the Kentucky Headhunters as the outdoor Saturday evening entertainment during KBF in September! Of course, that's after our small acoustic show during the KBF Saturday General Nelson Cookout!

And sorry, but we have no control over these exorbitant fees that Ticketmaster is charging...:D

Gillman
05-14-2012, 10:20
The New York Times has an editorial today on the Federal Appeals Court decision:

http://www.nytimes.com/2012/05/14/opinion/the-mark-of-makers-mark.html?partner=rssnyt&emc=rss

Gary

weller_tex
05-14-2012, 11:20
The New York Times has an editorial today on the Federal Appeals Court decision:

http://www.nytimes.com/2012/05/14/opinion/the-mark-of-makers-mark.html?partner=rssnyt&emc=rss

Gary
In honor of this ruling I had a couple of nicely generous pours of Maker's at a restaurant Sunday while we celebrated Mother's Day with my wife. Maker's is dang tasty stuff.

cowdery
05-14-2012, 14:07
I love the parochialism of New Yorkers. The NYT thinks the Sixth Circuit sits in Kentucky when it is actually based in Cincinnati. I know John Lipman calls the Queen City "Ohio-occupied Kentucky," but most people acknowledge the legitimacy of Ohio's claim. It is very close to Kentucky and maybe when the NYT is referring to flyover country, close is good enough.

Gillman
05-14-2012, 16:01
A letter to the editor, Chuck...? :)

Gary

cowdery
05-15-2012, 16:05
A letter to the editor, Chuck...? :)

Gary

I went with the mocking Facebook post instead.

Judge Martin lives in Kentucky but he works in Cincinnati.

Boyce Ficklen Martin Jr. (born October 23, 1935) is the most senior active judge on the United States Court of Appeals for the Sixth Circuit. Appointed by President Carter in 1979, Martin has served as Chief Judge of the circuit and has written more than 1,100 opinions during his tenure. Martin lives in Louisville, Kentucky. (Wikipedia)

jburlowski
05-15-2012, 16:14
I went with the mocking Facebook post instead.

Sigh... twenty-first century condescension. It just ain't the same. :grin: