Consumers often buy spirits because of bottle aesthetics. Although the number of spirits producers is small, the sheer number of brands that they produce can overwhelm a normal consumer at a liquor store. Without having tried the spirit or received a recommendation, the consumer has no other criteria for buying except for the brand name, label information, and bottle design. Thus, spirits producers often seek to protect design features of their brands’ bottles.
In the bourbon industry, red wax covering the cap of the bottle is associated with the iconic Maker’s Mark bourbon. Maker’s Mark has held a trademark for its dripping wax bottle element since 1985. In 2003, it sought to enforce its trademark when it sued Jose Cuervo for selling its “Reserva de la Familia” tequila in bottles with dripping red wax, alleging trademark infringement. Although Cuervo discontinued its use of dripping red wax, it counterclaimed by asking for cancellation of Maker’s Mark trademark. Finally, in 2012, the United States Court of Appeals for the Sixth Circuit resolved the dispute by agreeing with the lower court that Maker’s Mark trademark is due protection and that Cuervo had infringed the trademark.
The dripping red wax is not functional because competitors would not have difficulty designing around the mark or competing in the market with an enforceable trademark like this one. Therefore, the dripping red wax is deserving trademark protection. Further, there was a likelihood of confusion between Maker’s Mark and Reserva de la Familia largely because of the “extreme” strength of the trademark and the similarity of the dripping waxes. Thus, this likelihood meant that Cuervo infringed on Maker’s Mark valid trademark, its “signature trade dress element.”
This ruling showed that spirits producers can validly register trademarks on bottle design elements important to the spirit’s reputation, and protect these trademarks in courts. Other producers should follow Maker’s Mark lead in recognizing that bottle design can enhance its brand image and influence consumer buying decisions by registering trademarks on these design elements as quickly as possible and not being afraid to enforce these trademarks in courts.
