Some time ago, we recounted the sad history of a trademark dispute between Maker’s Mark Distillery – producers of fine bourbon – and Diageo North America Inc. – purveyors of outrageously overpriced tequila. Briefly stated, Maker’s Mark had sued Diageo, alleging infringement and dilution of the assertedly famous Maker’s Mark trademark, namely the “red dripping wax seal” on the tops of the Maker’s Mark bottles.
After a lengthy bench trial, the Court determined that the subject trademark was indeed infringed, but not diluted. Diageo, which had ceased use of the mark prior to the trial, was “enjoined” (hence the word “injunction”) from any further use of the mark. Maker’s Mark, as the “prevailing party,” was awarded its costs and fees, but no damages. We had believed this was the end of the story and had resumed drinking Jack Daniels. Well, not so (as to the story, not the drinking)!
Diageo has apparently decided that it simply must have the red dripped wax seals on its tequila bottles and has now appealed the trial court’s decision to the Court of Appeals for the Sixth Circuit, arguing that both the finding of infringement and the award of fees and costs were “clearly erroneous.” Diageo believes, however, that the trial judge was correct in his finding that Diageo had not diluted the Maker’s Mark trademark and in his decision to award no damages.
In response, Maker’s Mark has filed a 70-page “brief” (lawyerspeak for “lengthy novel”) wherein there are chapters devoted to the History, the Creation, the Function and the Promotion of the Red Wax Seal, together with chapters covering Third-Party References to the Red Wax Seal and Maker’s Mark’s Efforts to Protect the Red Wax Seal. This goes on for 23 pages, including dozens of photos. Merely reading it made the author thirsty.
Any good feelings which may have resulted from the trial court’s moderate decision have apparently evaporated. We reach this conclusion from the tenor of the Maker’s Mark brief which states that “in its ‘appeal,’ [Diageo] at times relies on evidence from outside the record, makes unsupported assertions as to the supposed existence of various ‘facts,’ and claims other facts are ‘undisputed,’ ‘uncontested,’ or ‘unequivocal’ even though the court made findings (and reviewed evidence) to the contrary. In short, [Diageo] is not appealing the decision; it is hoping to retry the case.”
Diageo, for its part, maintains that the trial court erred by ignoring the prominent Jose Cuervo name and family seal on the tequila bottles, which would prevent mistake or confusion – at least by sober purchasers. Diageo further contends that the trial court abused its discretion by awarding attorney’s fees to Maker’s Mark when it had not prevailed on the issues of trademark dilution or damages.
The parties will now be bringing all the bottles – er, exhibits – to the appellate court so they may be considered by the appellate judges.
A word of advice to the liquor companies – THINK RESPONSIBLY!