Maker's Mark Distillery, Inc. v. Diageo North America, Inc.
679 F.3d 410
| 6th Cir. | 2012Background
- Maker's Mark holds a red dripping wax seal trade dress on bourbon bottles; Cuervo adopted a red dripping wax seal on Reserva de la Familia tequila bottles in 2001-2003.
- Maker's Mark sued for federal and state trademark infringement and dilution; Cuervo discontinued the red dripping seal and switched to a straight-edged seal.
- District Court found Maker's Mark mark valid and nonfunctional, and enjoined Cuervo from using red dripping wax on tequila bottles; dilution claim denied.
- Cuervo appealed challenging aesthetic functionality, certain Frisch factor findings, and costs, but not the scope of the injunction.
- Court reviews aesthetic functionality de novo and factual Frisch findings for clear error; issues resolved in Maker's Mark favor.
- Record shows Maker's Mark’s red dripping wax seal is extremely strong, with extensive advertising and public recognition.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the red dripping wax seal aesthetically functional? | Cuervo argues aesthetic functionality bars protection. | Cuervo contends the feature serves a significant function in branding. | No; not functional under either test; mark upheld. |
| Do the Frisch factors support infringement? | Strength and similarity strongly support likelihood of confusion. | Some factors favor Cuervo (care of tequila buyers, relatedness limited). | Yes; balance favors Maker's Mark, finding infringement. |
| Was the district court’s analysis of strength, similarity, and actual confusion correct? | District court appropriately weighed strength and marketing evidence. | Appeal focuses on alleged errors in those findings. | No reversible error; findings upheld. |
| Were costs properly awarded to Maker's Mark as prevailing party? | Prevailing party entitled to costs; injunction granted supports status. | Costs should be denied or apportioned differently since damages were not awarded. | District court did not abuse discretion; costs awarded. |
Key Cases Cited
- Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (U.S. 1995) (functional test for trade dress and nonfunctional features)
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (U.S. 2001) (aesthetic functionality through dicta relevant to non-reputation costs)
- Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002) (tests for strength and functional theories in fashion/retail context)
- AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (house marks and similarity considerations in association cases)
- Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Cntr., 109 F.3d 275 (6th Cir. 1997) (Frisch factors and likelihood of confusion framework)
- Frisch's Restaurants, Inc. v. Elby's Big Boy, Inc., 670 F.2d 642 (6th Cir. 1982) (eight-factor test for likelihood of confusion)
- Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) (application of Frisch factors to consumer market)
- Wynn Oil Co. v. Thomas, 839 F.2d 1183 (6th Cir. 1988) (standard of review for factual findings and de novo legal review)