–Dan Kelly, Attorney

Have you ever seen a bottle with a top that resembles this image?  Do you associate it with a single source?  Do you associate it with a particular product?  If so, which source or product?  Would you think that the product pictured below comes from the same source?

  How about this one? 

These are the basic facts in a lawsuit brought last month by Maker’s Mark Distillery against Jose Cuervo International and related entities.  Maker’s Mark owns a federal trademark registration (more than one, actually) on its wax seal for use in connection with whiskey.  Jose Cuervo sells the bottles pictured above as part of its Jose Cuervo Reserva de la Familia line of tequilas.  While news outlets reported this new case last month, and indeed a new case was filed then, these two parties have been in litigation since 2003 on the same issues.  In the 2003 suit, the Cuervo parties have counterclaimed to cancel the Maker’s Mark trademark registration, in part on the basis that the wax seal is functional. The parties are currently briefing a motion for summary judgment brought by the Cuervo parties, so there may be a disposition within the next several months.

It is not presently clear to me how the two lawsuits are related.  In any event, these suits, if tried to published decisions, will add a helpful data point to the body of non-traditional trademark law.  We’ll keep you posted.

  • Is confusion likely? I don’t see how it could. From my experience with retail marketing, a bottle on the store shelf is seen in its entirety by a customer, not just the wax covered cap and throat. So all the other elements such as label color, shape and graphics, as well as bottle shape and color help differentiate one product from another.
    Makers Mark calls out the top coating as “trickling down the neck of the bottle in a freeform irregular pattern” in their trademark registration record. They see it as a defining quality and an important element of their trademark.
    Does the neatly trimmed wax cap of Jose Cuervo’s vary enough from the “freeform” wax dripping in the Makers Mark topper to make a difference?
    It could be argued the drips define trade dress for Makers Mark and the neatly defined base of Cuervo’s cap does not infringe on that detail, which is unique by Makers Mark’s own admission.
    Also, without getting into demographics and psychographics, there are distinct differences between drinkers of whiskey and drinkers of tequila. So, the possibility of confusion in-store seems less likely.
    Further, there are other alcohol beverages using wax caps, such as Trillium Absinthe or Sapolil Cellars wines, amongst others if we dig deep enough. This weakens Makers Mark uniqueness argument and strengthens Cuervo’s functional claim.
    From my perspective as a branding guy, product distinction can be found, so I don’t see likelihood of confusion, nor infringement.

  • Randall,
    Your point about the dripping wax of the Maker’s Mark seal versus the cut version of the Cuervo seal is a good one, as is your point about third party uses of wax seals. Those factors favor Cuervo.
    In order to defeat the argument that whiskey and tequila drinkers are different markets, Maker’s Mark can point to registrations that cover both products to show that customers are used to seeing the two products come from the same source. PHILLIPS and MCCORMICK are examples.
    While the store shelf comparison is tempting, there are many cases that admonish the courts not to make that comparison. The “proper” test is whether a consumer, when viewing the product with the accused mark, would think that it came from the same source as the owner of the registered mark. It has more to do with recollection than direct comparison.
    Perhaps the best argument is that the Cuervo product is (I think) always sold in a box, so the consumer does not see the wax seal until after the purchase is complete. This is also not dispositive, but it seems pretty compelling!