When you see a bottle of liquor with a bright red wax seal on it, what is the first phrase that comes into your head?
Beam Inc. hopes that most Florida residents would respond, “Maker’s Mark,” because since its establishment in 1958, the company has invested serious money in marketing its Marker’s Mark bourbon chiefly by promoting each bottle’s decorative wax seal. But the owners of a Mexican tequila brand that started using a similar wax seal in 1997 don’t think Maker’s Mark should be able to trademark the wax seal.
A trademark is defined as a word, symbol, logo or other graphic representation used by one manufacturer to distinguish its goods from those of another. Trademarks must be unique and descriptive and cannot be generic (meaning no one could trademark the term “refreshing” for their beverage, for example, because that is not specific enough). If one company has successfully applied for a trademark with the U.S. Patent and Trademark Office and has been diligent about using the mark and making sure others do not use it, then no other party can infringe on the exclusive right of the trademark holder to use the trademarked image.
Now, bear in mind that neither part has claimed that the wax seal is in any way necessary to its packaging; in fact, both admit it is superfluous and merely there for looks. So, keeping that in mind, what would you say? Do you think Maker’s Mark should be able to say the wax seal is its trademark, or is that too generic?
The answer is that the court agreed with Maker’s Mark and told the tequila maker it had to stop. Evidently, the attorneys for Maker’s Mark were able to say their client had used the wax seal for a longer period of time and were able to portray the tequila company as “free riding” on Maker’s Mark’s well-known detail.