Functional Alcohol: The History of Bourbon and the Mystery of Aesthetic Functionality in the Sixth Circuit of the United States

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.

This Kat would be quite curious to know how much of a six-day trial was devoted to the functionality under either test of red wax with varying drips down the side of a bottle as it relates to the sealing of a cap, but she has not yet read the District Court transcript.  She hopes to report those findings in her upcoming treatise on the History of Bourbon and its Packaging.

To sum up, the District Court found no aesthetic functionality (or traditional functionality either), and Jose Cuervo appealed.  The appeal caused a level of hope among Sixth Circuit trademark attorneys that we might actually get a doctrine about aesthetic functionality in our Circuit on this case, but to no avail.  The Court acknowledged that it had not yet decided whether it would recognize aesthetic functionality at all, and then expressly refused to do so under this case.  Not to end the frustrations there, the Court further decided that in this particular case, Jose Cuervo’s claim of aesthetic functionality failed.  This Kat agrees whole-heartedly that there is more than one way to seal a bourbon bottle and that the Maker’s Mark seal deserves the trademark protection it has earned, but must scratch her ears a bit over how her Appeals Court managed to apply a doctrine the existence of which it refuses to state whether it recognizes or not.  (If you, Dear Reader, did not follow that last statement, then you understand this Kat’s confusion.  Fear not.)

And so, aesthetic functionality in the Sixth Circuit............ this Kat is simply unable to supply any verb.  She believes she will go pour herself a good stiff brown drink instead.