Trademark Litigation: Maker’s Finally Gets Its Mark

After nine years of legal wrangling, a federal appellate court has ruled that Maker’s Mark Distillery Inc.’s signature red seal on its bottles is a valid trademark. As Bloomberg noted in its report, “The litigation lasted longer than the bourbon-aging process.”

Maker’s Mark originally filed its trademark infringement lawsuit against Diageo Plc., the world’s largest liquor manufacturer, in 2003. It alleged that Diageo’s Jose Cuervo tequila product infringed its trademark by using a similar red wax seal that could confuse customers. The trademark held by Maker’s Mark describes the seal as a “wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern.”

Diageo stopped using the seal, but claimed that the trademark was unenforceable since it had “aesthetic functionality.” Under the functionality doctrine, product elements such as shape color or design that make a product more attractive to the consumer are not protected by trademark law.

However, the 6th U.S. Circuit Court of Appeals affirmed the lower court’s ruling that the red seal wasn’t functional. Maker’s Mark has an “extremely strong” trademark deserving protection, Judge Boyce Martin wrote for a unanimous three-judge panel.

“We conclude that there is a likelihood of confusion between the products and that Cuervo has infringed,” Martin continued. The court also upheld the lower court’s decision to award Maker’s Mark $66,749 in attorney’s fees.

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Your trademark is your company’s unique face to the world and can add value to your products and services. Sheldon Mak & Anderson provides complete trademark services, including trademark prosecution, maintenance, licensing, and infringement. To make sure you are protected, contact me today.

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