MadMacaw Posted January 3, 2011 Share Posted January 3, 2011 All, A number of years ago I recall that a spirit producer that began putting a wax finish on their bottle top received a cease and desist notice from Maker's Mark that specified that the use of that finish was trademarked and therefore the spirit producers use of it was an infringement. I know of some wines with that finish (they probably don't care about wine) and some brandies. Does anyone know the status of this or if Maker's Mark has given up pursuing "infingers"? I have a client who wishes to do so and I want to advise him properly. Thanks for your input. Eric Watson, Owner AlBevCon Link to comment Share on other sites More sharing options...
Classick Posted January 3, 2011 Share Posted January 3, 2011 here is that thread BTW. http://adiforums.com/index.php?showtopic=742&view=&hl=&fromsearch=1 Dont know the status of MM's pursuits Link to comment Share on other sites More sharing options...
Wes Henderson Posted January 3, 2011 Share Posted January 3, 2011 All, A number of years ago I recall that a spirit producer that began putting a wax finish on their bottle top received a cease and desist notice from Maker's Mark that specified that the use of that finish was trademarked and therefore the spirit producers use of it was an infringement. I know of some wines with that finish (they probably don't care about wine) and some brandies. Does anyone know the status of this or if Maker's Mark has given up pursuing "infingers"? I have a client who wishes to do so and I want to advise him properly. Thanks for your input. Eric Watson, Owner AlBevCon Maker's prevailed in this case, in so much as the wax finish been used in commerce to the point that it is readily recognized. Thus, it enjoys the same protection as a trademark, per se. I would look to them to aggressively pursue any infringement of this right in the distiller spirits industry. It is unlikely that wax used on a wine bottle would cause confusion in the marketplace, and would not probably be an infringement. There is my nickel's worth.... Link to comment Share on other sites More sharing options...
NathanAEmery Posted January 3, 2011 Share Posted January 3, 2011 Maker's prevailed in this case, in so much as the wax finish been used in commerce to the point that it is readily recognized. Thus, it enjoys the same protection as a trademark, per se. I would look to them to aggressively pursue any infringement of this right in the distiller spirits industry. It is unlikely that wax used on a wine bottle would cause confusion in the marketplace, and would not probably be an infringement. There is my nickel's worth.... I think the issue was the color and pattern. I know Black Maple Hill uses a black wax over their bottle. I would suggest contacting them to see if they have had issues. Link to comment Share on other sites More sharing options...
heartland distillers Posted January 3, 2011 Share Posted January 3, 2011 We use wax in to seal our bottles. You can see my post near the bottom of the above mentioned thread. If you want to discuss in detail feel free to give me a call on my cell. Link to comment Share on other sites More sharing options...
cowdery Posted January 3, 2011 Share Posted January 3, 2011 Maker's Mark cannot and will not try to stop a standard wax closure with a clean cut at its base, regardless of the color of the wax. The key to Maker's exclusive claim is what they call "tendrils," the irregular legs of wax that drip down the side of the bottle. The tequila case probably pushed the limits of that claim, since the tendrils on that bottle were so different, but it's in the nature of trademark defense to see how far you can push the envelope. There are many examples of wax closures that do not terminate in tendrils, including examples that use the same color. No tendrils of any kind, no worries. Link to comment Share on other sites More sharing options...
Mark Traphagen Posted January 3, 2011 Share Posted January 3, 2011 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 Link to comment Share on other sites More sharing options...
grehorst Posted January 4, 2011 Share Posted January 4, 2011 I got a letter just last week from their attorney. Seems they don't like the tendrils on our Pumpkin Spirit bottle- orange wax on a product considered a distilled spirit specialty. The trademark specifically states whiskey, why they feel this entitles them to all spirits I don't know. I also don't understand how they could trademark the effects of gravity. If I am required to avoid using the simplest method of wax sealing (letting nature takes it's course and allowing drips) it requires an additional step- I'll have to trim the wax- another operation meaning my costs are higher. In addition, our two products would never be confused. But, they've got 50 lawyers ready to go to war. Unless someone wants to donate to my legal defense fund we'll be changing our packaging. Maybe we'll cut off the tendrils, put them in a bag and tie them around the neck? Interestingly no damages were awarded in the Makers vs Cuervo suit which I believe means the court felt Makers wasn't harmed. The irony of the Makers vs Cuervo lawsuit is that Diageo corporate parent of Cuervo is considered to be the top suitor to Makers Mark which Fortune Brands will likely be selling. Info on the Makers vs Cuervo suit- http://www.law.com/jsp/cc/PubArticleCC.jsp?id=1202447690370 Link to comment Share on other sites More sharing options...
Mark Traphagen Posted January 5, 2011 Share Posted January 5, 2011 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. Link to comment Share on other sites More sharing options...
cowdery Posted January 5, 2011 Share Posted January 5, 2011 This represents a good example of what a proper trade association can do and also points out the limits for small distillers of the affiliate relationship with DISCUS, which certainly is not going to take a position on a dispute between two of its full members, let alone take up a cause on behalf of its micro-distillery affiliates that is contrary to the interests of any full members. Unfortunately, this is one of the ways trademark law can be used. A small company will almost always choose to get out of the big company's way rather than fight, but these things do get sorted out. Let Beam and Diageo fight the war on your behalf. Having observed who gets letters like the one Guy got, it tends to be related to the tendrils, not to the mere use of wax, nor do I know of them going after anyone because of wax + color without tendrils also being involved. It is probably good advice for anyone in this business to have some kind of relationship with an attorney who practices in intellectual property. Most people, if they think about trademarks at all, seem to think there is some entity that enforces them, independent of the trademark owners, a sort of trademark police. In fact the trademark owner has a legal obligation to defend the mark. While it's certainly important to do the right thing if you are accused of infringement, it's also important to do the right thing with regard to protecting your own marks. Link to comment Share on other sites More sharing options...
DrewKulsveen Posted January 7, 2011 Share Posted January 7, 2011 I wouldn't use the color red either as they apparently own the color. Trust me, you'll definitely get a letter. We used to use red for a customer of ours a few years back, no tendrils, and he received a letter. Link to comment Share on other sites More sharing options...
cowdery Posted January 7, 2011 Share Posted January 7, 2011 Consistent with what Drew says, I believe they will go after a whiskey with a red wax top, tendrils or no, but not a non-whiskey. A wax top of any other color is clearly safe as many other bourbons use them, most notably Knob Creek (another Beam product) and Evan Williams Single Barrel, a Heaven Hill product, both of which are black. But tendrils in any color, especially on a whiskey, are likely to incur their wrath. The bev alcohol industry has a long tradition of knock-offs, so just as there are trademark owners spending money to defend their marks, there are other producers spending money trying to break those marks. Both Eagle Rare and Fighting Cock bourbons were conceived as Wild Turkey knock-offs, just as Ezra Brooks, Evan Williams, and a host of others were originally Jack Daniel's knock-offs. There used to be a score of different Southern Comfort knock-offs, with names like Southern Host. And before anyone gets too pissy about Maker's, wouldn't you love to have a trademark that strong yourself someday? Link to comment Share on other sites More sharing options...
grehorst Posted December 1, 2011 Share Posted December 1, 2011 Update- Appeal begins... http://www.washingtonpost.com/business/court-steps-into-sticky-issue-can-makers-mark-bourbon-stop-others-from-using-red-wax-seal/2011/12/01/gIQA2HE2GO_story.html Link to comment Share on other sites More sharing options...
Recommended Posts
Create an account or sign in to comment
You need to be a member in order to leave a comment
Create an account
Sign up for a new account in our community. It's easy!
Register a new accountSign in
Already have an account? Sign in here.
Sign In Now