Federal Appeals Court Rules for Maker's

[sku]

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]

Dude, what's up with Diego, seriously! They're fast becoming the Enron of the spirit industry :hot:

[sku]

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]

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]

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

[DaveOfAtl]

Very interesting opinion. I never worked on anything this cool when I was clerking. Congrats to Chuck on being cited.

[smokinjoe]

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]

Wow, that's a very cool read..and congrats to Chuck!

[clingman71]

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

[T Comp]

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]

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]

Its not the wax, its the tendrils.

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

[Gillman]

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]

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]

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]

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]

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]

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]

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]

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

[AaronWF]

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

[sku]

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

[alexandergjones]

what about this Salad dressing company. Should they be worried?

http://www.tessemaes.com/

[Gillman]

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]

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.