The Kats and their 8,997 friends have all been de-herded and gone back to their homes around the world after what appeared to be quite a successful INTA. It was this Kat’s inaugural debut at the trademark conference (you can find her musings about it here), and she enjoyed it immensely, meeting dozens and dozens of new people (including the IPKat himself and the Kat who brought this one into the fold), being featured in the Top Tweets of INTA and having the fabulous good marketing luck of being No. 1 on the Attendee List (alphabetically speaking, of course). And of course, learning a few new things about trademark law in the process.
Much discussion ensued over the course of the conference about the U.S. doctrine of functionality, and as if on cue, the Sixth Circuit Court of Appeals (this Kat’s home Court) has given us more wax to chew on on the issue in the case of Maker’s Mark v. Diageo North America, et al. (Case No. 10-5508, May 9, 2012).
Actually, the Court has given us very little to chew on at all, at least in terms of substantive law. This Kat just felt the overwhelming urge to make the pun. But if any of our dear readers are fans of the brown spirits contained in a Maker’s Mark bottle, or of the story behind it, the case is worth a read merely for the fantastic synposis of the History of Bourbon provided in the opinion.
Once the opinion establishes that bourbon is corn whiskey distilled in new oak barrels and is primarily (although not exclusively) made in the U.S. Commonwealth of Kentucky, we move on to the history of Maker’s Mark, perhaps one of the most famous bourbons from Kentucky, and its signature dripping red wax seal. The seal was invented by Margie Samuels, whose husband was credited with the original recipe for Maker’s Mark. (In history lessons, women don’t always get their due). It has been used since 1958 to seal the cap to the bottle. In 1995, the makers of Jose Cuervo tequila began selling bottles with a remarkably similar cap, which eventually led to a six-day trial in 2003.
Cuervo argued, inter alia, that the Maker’s Mark cap (which had been the subject of an incontestible trademark registration in the USPTO since 1985) was aesthetically functional. The Sixth Circuit had only yet adopted the competition theory of functionality in the case of Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., (230 F. 3d 619) under which one of two tests could be applied:
The test for comparable alternatives asks whether trade-dress protection of certain features would nevertheless leave a variety of comparable alternative features that competitors may use to compete in the market. If such alternatives do not exist, the feature is functional; but if such alternatives do exist, then the feature is not functional . . . . The effective competition test asks . . . whether trade dress protection for a product’s feature would hinder the ability of another manufacturer to compete effectively in the market for the product. If such hindrance is probable, then the feature is functional and unsuitable for protection. If the feature is not a likely impediment to market competition, then the feature is nonfunctional and may receive trademark protection.