In a case focusing on trade dress for a bourbon bottle, the U.S. Court of Appeals for the Sixth Circuit has now expressly adopted the “aesthetic functionality” doctrine for trademark protection. The bourbon bottle in issue was the subject of extensive historical and anecdotal treatment at the outset of the opinion. Writing for the panel, Judge Boyce Martin affirmed that Maker’s Mark’s “signature trade dress element—a red dripping wax seal—is due protection.” Maker’s Mark v. Diageo N. Am., Case Nos. 10-5508; -5586; -5589 (6th Cir., May 9, 2012) (Martin, J.).

Bourbon producer Maker’s Mark sued the producers of Jose Cuervo tequila over the red dripping wax seal found on their premium “Reserva de la Familia” bottles. Finding that Maker’s Mark occupies a “central place in the modern story of bourbon,” with secondary meaning acquired through years of strong advertising and brand marketing, the panel agreed that the registered trademark was “extremely strong.”

A central issue on appeal was whether the red dripping wax seal was invalid due to its alleged aesthetic functionality. Prior to the issuance of this decision, the 6th Circuit had not clarified its test for aesthetic functionality and declined to do so here. However, with due regard for the Supreme Court dicta regarding aesthetic functionality in TrafFix Devices v. Marketing Displays, Inc. (see IP Update, Vol. 4, No. 5), the analysis centered on whether the protected feature “serves a significant function” and whether “the exclusive use of that feature by one supplier would interfere with legitimate competition.” In applying the two alternative tests, the 6th Circuit endorsed the aesthetic functionality doctrine and concluded that under either rationale Jose Cuervo’s arguments in support of its cancellation counterclaim failed.

First, under a comparable alternatives inquiry, the design was not functional because it would not be difficult or costly for a competitor to design around the red wax seal. As recognized by the district court, there is more than one way to seal a bottle with wax to make it aesthetically appealing. Under such circumstances, the court concluded a mark holder can prevent competitors from using a confusingly similar design. Second, under the effective competition test, the court concluded the design was not functional because it did not hinder a competitor’s ability to succeed in the market. For example, Cuervo would not be at a disadvantage by being precluded from using the red wax because it could still be successful by using a different color seal.

After determining that the dripping wax trademark was enforceable, the court affirmed the infringement finding through application of the 6th Circuit’s Frisch factors. The court discussed each of the eight factors and determined there was a likelihood of consumer confusion. The strength of the red wax seal was found to be inherently distinctive based on its physical uniqueness and its commercial recognition. The 6th Circuit found that the similarity between the red dripping wax on the Maker’s Mark and Cuervo products also contributed to the likelihood of confusion, even if there were identifying labels and even in the absence of meaningful evidence of actual confusion.

Practice Note: A theme guiding Judge Martin’s discussion was that the wax seal is not functional because it was not essential to the bourbon bottle. Given that the red dripping wax had been a “hallmark” on Maker’s Mark since 1958, the court concluded that the circumstances in support of trademark protection were compelling.