Judge limits wax seal on liquors to Maker’s Mark

Posted April 2, 2010 at 4:34 p.m.

Makers-Two-Web.jpg(Chicago Tribune Photo)

Associated Press | The dripping red wax seal on a bottle of Maker’s Mark is not only
distinctive, it’s now exclusive legal property of the bourbon company.

federal judge on Friday issued an injunction preventing a rival liquor
company from using a dripping wax seal on its tequilas sold in the
United States, ending a seven year legal battle over the bottle topper. The
ruling by U.S. District Judge John G. Heyburn II comes in a
long-running lawsuit between Maker’s Mark and competitors Diageo North
America and Casa Cuervo over the Fortune Brands trademark on the wax

Deerfield, Ill.-based Fortune Brands owns Maker’s Mark.

Court considers the red dripping wax seal inherently distinctive,
because it is a unique mark used in an unusual way to draw in the
consumer,” Heyburn wrote.

Mexico-based Cuervo used a dripping red
wax seal on special bottles of its Reserva tequila, which was
distributed by London-based Diageo.

Heyburn’s ruling barred the
companies from using the seal, but did not award damages to Maker’s

Calls and e-mails to spokesmen for Maker’s Mark, Diageo and
Cuervo were not immediately returned Friday.

The Samuels family,
which created Maker’s Mark, in 1958, trademarked the distinctive seal,
which serves only a decorative purpose.

Cuervo opted to include a
dripping wax seal on bottles in 1997 as part of an effort to create an
artisan look. The bottles of Reserva with the new seal entered the U.S.
market in 2001 in a limited production of 3,000-to-4,000 bottles. The
bottles remained on sale in the U.S. for about three years.

Mark, bottled in Loretto in central Kentucky, sued over the seal in
2003, claiming it violated the long-standing trademark. Cuervo dropped
the dripping wax seal five years ago.

During a six-day trial in
Louisville last year, Casa Cuervo CEO Juan Domingo Beckmann testified
that he made a business judgment to stop using the seal after being

“I like the way it looks, and I would like to be able to use
the dripping wax because it looks more hand-crafted,” Beckmann
testified. “But if I am going to be sued over it, or if I have to pay in
order to use it, I simply wouldn’t.”

Heyburn found that idea
“laudable,” but not persuasive enough to forestall an injunction.

Mark spends about $22 million annually to market its bourbon, and sells
about 800,000 cases annually. The ad campaigns focus heavily on the
dripping red wax seal. The company occasionally will make a wax seal of a
different color, such as its recent promotion raising money for a
charity with University of Kentucky basketball coach John Calipari. In
that case, Maker’s Mark produced a limited number of bottles with a blue
wax seal.

Along with the advertising campaigns, Maker’s Mark uses
onsite dipping stations that allow customers to make their own wax
seals on bottles, as well as bartender training.

“Because of the
unique nature of the advertising’s focus on the red wax, the mark has in
some ways taken on a life of its own, garnering significant attention
beyond the purchased advertising,” Heyburn wrote. These efforts have
cultivated something akin to a cult following of the brand among whisky

Heyburn declined to award damages, saying Cuervo
violated the trademark, but did not focus its marketing efforts on the
red wax seal to the point of damaging Maker’s Mark’s brand. Cuervo spent
only about $500,000 of its $100 million overall branding budget on the
Reserva tequila and sold its bottles for $100 each, while Maker’s Mark
went for about $24 a bottle, Heyburn found.

“The price difference
in products suggests that Reserva appeals to connoisseurs,” Heyburn

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One comment:

  1. George LeBreux April 6, 2010 at 1:24 pm

    What exactly is trademarked? The wax seal? Or the sloppy dripping? Vintners have been dipping corks in wax for millenium. Is this like people trying to patent human genes?