Mark Traphagen

Here's something to keep in mind for the future. If there had been a consensus by Institute members in favor of either Diageo or Maker's Mark - and the comments on this thread are running in favor of Diageo - the Institute could have filed a "friend of the court" or amicus brief with the Court of Appeals. The purpose of amicus briefs is to explain how a legal issue, in this case trademark protection for the appearance of bottle neck capsules, could affect independent distillers, and often to urge the court to rule a particular way. But the deadline for filing an amicus brief in Maker's Mark v Diageo has already passed. To be ready next time an issue like this arises, the Institute could consider monitoring court decisions of potential significance to independent distillers, and create a process for deciding when to file amicus briefs and how to decide what position to take. Something to think about.

The fat lady still hasn't sung in the trademark fight between Maker's Mark and Diageo over red wax bottle capsule for distilled spirits, and trademark lawyers like me are watching closely. Whatever you think of the merits of its case, Maker's Mark was upset enough by Diageo's use of a red wax capsule on bottles of limited edition Jose Cuervo tequila that it not only sued for trademark infringement, but also went all the way through trial - a very expensive proposition. In April 2010, a federal district court in Kentucky ruled in favor of Maker's Mark and decided that Maker's Mark had not only a valid trademark in the dripping wax capsule, but one that was strong enough that Diageo's use of a red capsule infringed Maker's Mark's rights in the trademark. The Bourbon Blog reported the federal court's 44-page decision last year. Since then, Diageo has appealed the district court decision to the Sixth Circuit Court of Appeals, which hasn't yet issued a decision. For the curious, Maker's Mark has two U.S. federal trademark registrations involving the red wax capsule - one for the shape and placement of the "dripping wax" capsule on the neck of bottles for its bourbon, and a second for the color red for capsules placed on bottles of bourbon, copies of which are attached. In an unexpected twist, the federal court ordered Diageo to stop using the red wax capsule on its tequila, but did not order Diageo to pay Maker's Mark's damages and Diageo's profits from the trademark infringement. Whatever the Court of Appeals decides, what's the moral of this story? Sometimes a gut check just isn't good enough, and it's worth the trouble to get legal advice before making a bet on your packaging and labeling. Drop me a line if you'd like a copy of the district court's decision. 73526578.pdf 76416905.pdf

All, I'm a trademark and copyright lawyer with several beverage clients. I've been using the forum for over a year now, but this thread is the strongest interest I've seen in trademarks and brand protection. If there's enough interest, maybe we should move the conversation to another, more general thread on the legal and marketing aspects of building a brand. To hold up my end of the conversation, I've attached some general information entitled "Trademark Checklist for Winemakers, Distillers, and Brewers." I hope you'll find it useful in your efforts. Please read and comment as you like. Mark Traphagen TM Checklist for Winemakers, Distillers & Brewers.pdf

Hmm. Sometimes descriptive terms can be protected as trademarks, if there is proof that the marketplace has come to recognize the term as designating just one source of the products or services. Five or more years use is sometimes enough for the US Patent and Trademark Office, but more is usually needed to enforce descriptive marks in court.

Nathan, You should contact Fred Wickham at Howell Libertore & Wickham Inc. Fred has a marketing communication and graphic design agency in the Finger Lakes, which does labels for wineries and artisanal food producers. You can reach Fred by e-mail at fred@hlwelmira.com or on his web site at www.hlwelmira.com. Also attached is some general trademark law information that I send to my wine and food clients when they are selecting a name or design for their products. Best of luck! Mark Mark Traphagen Traphagen Law PLLC Intellectual Property for Business, Media and the Arts Washington, DC 20006 Phone (202) 223-4775 E-Mail mark.traphagen@traphagenlaw.com wine trademark one-pager.pdf