Wax Wars! Maker’s Mark v. José Cuervo – Is Melty Wax a Trademark? Or a Pretty Seal Available for All to Use?

Is wax coating on bottles of liquor a trademark?  Or is it a pleasing way to make the liquor look “artisanal”?  If your company sells products symbolized by a unique and visually attractive graphic or ornamental device, you should care about this question.

On December 2, two heavyweights in the hard liquor industry (we’ve heard of “Big Oil,” but is there such a thing as “Big Booze”?) argued before the U.S. Court of Appeals for the Sixth Circuit.  The legal issues:  (1) whether a melted wax seal on José Cuervo’s $100 reserve tequila infringed Maker’s Mark’s registered design trademark for “wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern” on whiskey bottles; and (2) whether the use of dripping wax over the cap of a bottle of spirits is “aesthetically functional.”  Here are the two bottles:

Some courts have held that if a design element is so aesthetically pleasing that it makes customers want the item, one company cannot claim that design element as a trademark and keep others from using it, because that would put competitors at a disadvantage.  This notion of “aesthetic functionality,” however, is a controversial topic.  Earlier this year, we reported on a Ninth Circuit opinion that images of Betty Boop on clothing and handbags was unprotectable because it was aesthetically functional induced raised eyebrows and raised voices in the trademark world.  After the outcry, the Ninth Circuit quietly changed its ruling to sidestep the issue.

In the Maker’s Mark vs. José Cuervo case, aesthetic functionality is front-and-center once again, with Cuervo claiming that the “hand-dipped wax seal” look helps create an artisanal image that helped to sell its luxury tequila at $100 per bottle.  Cuervo has marshaled evidence that artisanal producers of alcoholic beverages have used hand-dipped wax seals for centuries (and still do).  Cuervo also argues that its bottle not only looked different from Maker’s Mark’s whiskey bottle, but prominently displayed the Cuervo brand—and that at $100 a pop, its customers would be well-aware that they weren’t buying Kentucky bourbon.  Maker's Mark relied on decades of advertising focusing consumers on the wax seal as creating an indelible association with its brand.

The Sixth Circuit is likely to issue its ruling in the next 6-8 months, and it’s certain that one side won’t be toasting the outcome.  If the court finds these wax seals aesthetic functional, then trademark law would not be able to stop consumer brand confusion.  But if the court rejects aesthetic functionality, then Maker’s Mark would have a de facto monopoly on that type of seal in the liquor business.  A real trademark law quandary.

In the meantime, however, owners of attractive packaging designs that could be attacked as aesthetically functional would be wise to shore up their trademark bona fides by, for example, use of advertising specifically calling attention to the attractive design element—be it packaging, product shapes, or product color combinations—that uniquely identifies the brand owner and drives sales. 

Authors:  Tom Casagrande    Paul Van Slyke

Louboutin red sole trademark dispute gets Tiffany-twisted

Authors:  Robin Barnes and Hamad Hamad             

Whether you are a regular fashionista or a certified shoe fanatic, you probably know about Christian Louboutin’s suit against Yves Saint Laurent alleging infringement of Louboutin’s registered trademark for red soles.  After the district court denied Louboutin’s preliminary injunction request and set a hearing to consider cancelling Louboutin’s registration, Louboutin appealed to the Second Circuit. Last week, Tiffany & Co. filed a brief supporting Louboutin’s position.

You can watch this CBS News segment for a quick recap of the case.

One issue on appeal is the breadth of Louboutin’s registration, which simply recites that the “mark consists of a lacquered red sole.”  While the court’s opinion is not perfect, it astutely questioned the breadth and vagueness of this description.  Imagine the difficulty for competitors – are fire engine, cherry, and brick red all covered by Louboutin’s registration?  There are difficulties on the consumer side too – can multiple shades of red establish sufficient secondary meaning to support the registration, and can the average person even tell the difference between certain shades?


 Interestingly, the red color depicted in Louboutin’s registration for the color of the sole of a shoe

is not the same color used in its design mark registration,

, which makes you wonder if Louboutin even knows his own shade of red. 

Tiffany’s interest is not surprising given the trademark registrations on its famous blue boxes and little blue bags.  In an effort to protect its own blue registration, Tiffany argued that the court erred by creating a rule that a single color can never be a valid mark for fashion items.  While the court did seriously question the ability to protect a single color for fashion items, its decision was ultimately based on its determination that Louboutin didn’t have a protectable mark, not just because a single color was claimed.  Although functionality issues were addressed by the court and by Tiffany, what’s interesting here is the discussion and concerns over the broad assertion of trademark in the single color “red.”

The issue of the breadth of a single claimed color is interesting because of the contrast between Louboutin’s and Tiffany’s registrations.  Tiffany’s registrations claim “robin’s-egg blue.”  Would a similar level of specificity have satisfied the Louboutin court?  Who knows, but Tiffany could at least rely on a distinct shade of blue if it were in Louboutin’s position, perhaps alleviating the court’s concerns about an overly broad and vague registration.

Even more interesting (in a non-legal sense) is the Tiffany twist: the law firm that wrote Tiffany’s amicus brief also prosecuted its robin’s-egg blue registrations AND Louboutin’s red sole registration.  Was there a strategic decision by counsel to go broad in Louboutin’s application and narrower in Tiffany’s?  It’s also possible (perhaps probable?) that Louboutin instructed his counsel to seek broad trademark protection for “red.”  Until the Second Circuit rules, however, it’s too early to draw concrete conclusions for prosecution strategy, but this distinction suggests that specificity in single color mark descriptions (at least in the fashion industry) may avoid future litigation complications.