Court to Decide Fate of Maker’s Mark Trademark Wax Seal

By Joseph Mandour on December 2, 2011

whiskey-in-glasses-thumb-200x150-31413 California – A panel of three federal judges in the U.S. 6th Circuit Court of Appeals will decide whether Maker’s Mark may keep its distinctive wax seal trademark which tops bourbon bottles on store shelves everywhere.

The judges will also determine whether Maker’s Mark will be able to enforce injunctions preventing any other liquor company from using a similar wax top.

The Kentucky-based bourbon distiller won a 2010 court order granting it exclusive rights to the dripping red wax seal. At the same time of the 2010 order, U.S. District Judge John G. Heyburn II granted Maker’s Mark and injunction prohibiting any other company from using a similar seal, claiming that the bourbon-maker had creative a valid, distinctive trademark.

Judge Heyburn’s injunction ended a seven-year long trademark infringement lawsuit between Maker’s Mark owner, Fortune Brands, and London-based Diageo North America and Casa Cuervo of Mexico. Casa Cuervo infringed on the bourbon-maker’s seal by using a dripping red wax seal on its Reserva tequila bottles. The Deerfield, Illinois-based Fortune brands has since split its liquor business into a new company called Beam, Inc., which handles the distilling of the Maker’s Mark bourbon.

Attorneys for Diageo and Casa Cuervo argued that the liquor companies’ use of the similar wax seal would not cause consumers to be confused since it was being used on tequila and not a competing brand of bourbon. They also claimed that use of the seal would not cause consumers to think that Maker’s Mark was in any way associated with the companies.

An attorney for Maker’s Mark claimed that the dripping seal was used by the Kentucky company to set it apart from other liquor brands, and that that was its only purpose. The attorney, who is the brother of comedian Stephen Colbert, made the following statement, “What they have here is a competitive desire to use the wax, not a competitive need to use wax.”

Casa Cuervo responded to the 2003 trademark infringement complaint by dropping its use of the wax seal six years ago. In that case, the judge did not award damages to Maker’s Mark, saying that although Casa Cuervo violated the trademark, it had not focused its marketing efforts on the red wax seal to the extent of damaging the Maker’s Mark brand.

The appeals court did not provide a timeline for deciding the future of the red wax seal trademark.

Maker’s Mark spends approximately $22 million annually on marketing its bourbon, which sells for $25 per bottle. Its advertising campaign puts a lot of emphasis on the dripping wax seal and even has onsite dipping stations that allow customers to make their own wax seals on bourbon bottles.

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