In an Opinion issued today, the Sixth Circuit affirmed that (1) Maker’s Mark’s registered trademark for its red dripping wax seal is not “aesthetically
functional” and is thus a protectable mark, and (2) Casa Cuervo, S.A. de C.V.’s Reserva de la Familia tequila infinged that mark by using red dripping wax seals on their bottles that created a likelihood of consumer confusion.
After observing that Marker’s Mark’s red dripping wax seal is “its signature trade dress element,” the Six Circuit held that this design element is not aesthetically functional because there are comparable alternatives for sealing a bottle and protecting the mark does not put other manufacturers at a competitive disadvantage in the market place. As for trademark infringement, the Sixth Circuit noted that this case involved “confusion of sponsorship” and that the factors for determining the likelihood of consumer confusion weighed in favor of Marker’s Mark, especially the strength of the mark and the similarity of Cuervo’s red dripping wax seal. You can read the complete Opinion here.
This ruling highlights that design elements can be an important (and even iconic) part of a product’s brand image and diligent companies can, through advertising and exclusivity, create protectable trade dress rights in those elements that will be protected by the Courts. Here, Maker’s Mark succeeded by recognizing the important relationship beween its dripping, red wax seal and the public image of its product, and then taking all necessary steps to promote and protect that image.