–Sharon Armstrong, Attorney

Last Friday, a federal court in Kentucky ruled that Fortune Brands, the maker of Maker’s Mark bourbon, enjoys exclusive rights in the dripping wax seal that adorns each bottle of the spirit. (You can read about the case in earlier stages in Dan’s post, here.). Fortune had sued Diageo, another beverage giant and maker of Casa Cuervo Reserva tequila, which also uses a dripping wax seal on its bottles, as shown here:



Now, legend has it that each Maker’s Mark employee on dipping duty has a different dipping style, such that the trained eye (or bourbon aficionado) can tell which bottle has been dipped by which dipper, based on the way the wax drips down a bottle’s neck. Indeed, due to the fact that the dipping process is not mechanized, no two bottles are alike.

In general, the Trademark Office will not allow registration of more than one mark. TMEP 807.01. The Trademark Office also will not allow registration of what it cleverly calls “phantom” elements in marks – that is, a word, alpha-numeric designation, or other component that is subject to change. TMEP 1214. The reason is to prevent applicants from obtaining the benefits of registration for multiple marks under the guise of one mark. (That would be like having your Manhattan and drinking it too.)

Nonetheless, Maker’s Mark owns a registration for its dripping wax seal; the mark description is “The mark consists of a wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern” (emphasis added). As a bourbon-drinker myself, I think it’s more than reasonable that consumers associate a dripping wax seal with Maker’s Mark. But given the irregularity of Maker’s Mark’s mark, and the state of the Trademark Rules, should Maker’s Mark have obtained a registration? What do you think?