In an opinion rich with the history of bourbon, the Sixth Circuit held that Maker’s Mark’s signature trade dress element of its trademark, the red dripping-wax seal, was due protection.  Maker’s Mark has used the red dripping-wax seal since 1958, and in 1980 registered a trademark of its trade dress.  In 2001, Jose Cuervo’s began selling its premium tequila, “Reserva de la Familia” with a red dripping wax seal similar to the Maker’s Mark red dripping-wax seal.  Maker’s Mark sued Cuervo in 2003, claiming trademark infringement and dilution.  The district court found that Cuervo had infringed on Maker’s Mark’s valid trademark of the red dripping-wax seal and enjoined Cuervo from using red dripping-wax on the cap of its bottles. The district court denied Maker’s Mark’s claim for damages but awarded Maker’s Mark some of its costs.   

On appeal, the Sixth Circuit upheld the district court’s finding that the red dripping-wax seal was not aesthetically functional, and therefore a valid trademark.   Declining to adopt a test for the aesthetic functionality doctrine, the Sixth Circuit held that the red dripping-wax seal was not functional because other comparable alternatives existed for Cuervo.  

The Sixth Circuit then upheld the district court’s factual findings and its balancing of those findings pursuant to Frisch’s Rests., Inc. v. Elby’s Big Boy, Inc., 670 F.2d 642 (6th Cir. 1982).  Cuervo appealed only three of the factors: the strength of the trademark, similarity, and actual confusion.  The Sixth Circuit found no error:  Maker’s Mark red dripping-wax seal was an extremely strong mark due to its unique design and the company’s marketing efforts, and the lack of evidence of actual confusion with the “Reserva de la Familia” was non-determinative.  Reviewing the court’s balancing of the Frisch’s factors de novo, the Court concluded that there was a likelihood of confusion between the products and that Cuervo had infringed upon the trademark.   The Sixth Circuit also upheld the district court’s award of costs to Maker’s Mark as the prevailing party.

Perhaps more important than the legal discussion, the opinion’s interesting narrative about the history of bourbon will surely be of interest to all bourbon connoisseurs (or at least those of us who read F.3d).