June 15, 2012
Previously published on June 11, 2012
Trademark attorneys are talking about the Maker’s Mark decision, where the red dripping sealing wax on a bottle of Makers Mark® bourbon was found to be a trademark and Jose Cuervo was stopped from using a similar red dripping seal on tequila. Part of the stir is the humorous and well-written opinion, which begins: Justice Hugo Black once wrote, “I was brought up to believe that Scotch whisky would need a tax preference to survive in competition with Kentucky bourbon.” Dep’t of Revenue v. James B. Beam Distilling Co., 377 U.S. 341, 348-49 (1964) (Black, J., dissenting). While there may be some truth to Justice Black’s statement that paints Kentucky bourbon as such an economic force that its competitors need government protection or preference to compete with it, it does not mean a Kentucky bourbon distiller may not also avail itself of our laws to protect its assets. This brings us to the question before us today: whether the bourbon producer Maker’s Mark Distillery, Inc.’s registered trademark consisting of its signature trade dress element-a red dripping wax seal-is due protection, in the form of an injunction, from a similar trade dress element on Casa Cuervo, S.A. de C.V.’s Reserva de la Familia tequila bottles. We hold that it is. Part of the stir in the business community is the idea that a trademark can be more than a product name or logo. When the packaging of a product or decor of a restaurant is protectible, it is called “trade dress“. Trade dress may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. If the trade dress is inherently distinctive, it can be registered and protected based on this distinctiveness (Owens-Corning was able to register the color pink for its fiberglass insulation because the pink was arbitrary). If a feature is a functional part of the product, trade dress cannot be protected unless the owner can prove there are some distinctive features that are not merely functional or the trade dress has been used so long that it has acquired distinctiveness in the marketplace (Coca-Cola® soft drink bottle shapes were registrable because the ribbing and curves on the bottles are not the functional part and serve to distinguish that brand of soda in the marketplace).
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