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How many of you readers have been to a horse race, college football tailgate, fraternity formal, bachelor party, or just enjoy bourbon? If so, you probably fondly remember the ritual of breaking the red wax seal on a fresh bottle of Maker’s Mark Bourbon, renowned for its smooth, sweet taste. Maker’s Mark likes its red wax seal too, registering it as a trademark, featuring the wax prominently on its website, and even offering for download a “Dip Your Own” mobile app. So when Jose Cuervo switched from straight-edged seals to dripping red wax seals on its Reserva de la Familia tequila, Maker’s Mark sued. In a victory for the USA’s native spirit, on May 9 the Sixth Circuit affirmed the District Court’s ruling enjoining Jose Cuervo from using dripping red wax seals on its product.
“But wait,” enterprising readers will note, didn’t a court deny shoe-designer Christian Louboutin’s request for trademark protection for using red soles on his high-end ladies shoes? The cases are similar, both dealing with novel uses of the color red in trademarks. And just as Maker’s Mark has used the red seals since 1958 and claims the seals as one of the signature elements of its product, Christian Louboutin’s use of red in the specific location of the sole of the shoe is well-known among the fashionable, and Louboutin claims that the use of red soles is a crucial part of the brand’s identity. He is currently appealing the lower court’s adverse decision (see also Jordan Teague’s previous JETLaw coverage of the case).
The difference between the two cases turns on “functionality.” In the Maker’s Mark case, Jose Cuervo’s losing argument was that the seals, though aesthetic, were “functional” at their core and thus could not be trademarked. As per 15 USC § 1052(e)(5), if a mark “comprises any matter that, as a whole, is functional,” the trademark is improper. The Sixth Circuit held that though it was an open question as to whether the Circuit recognized “aesthetic functionality” at all, either under of the two tests for aesthetic functionality, Jose Cuervo could not succeed. It was neither difficult to design around the mark (the first test), as Jose could plainly use other wax sealing methods. Furthermore, as to whether the mark foreclosed “effective competition” (the second test) the court noted that Jose Cuervo could use another color.
Unlike in Maker’s Mark, in the Louboutin case, the court held that the red sole of the shoe was functional. Like a piece of art, the color of the shoe was not designed merely as a mark, but to convey “energy,” to be “sexy,” and to attract other people to the wearer. The decorative and evocative aspects of the art inherent in the fashion of the shoe were not permissible as a trademark, even though Louboutin is recognized in the fashion community for red soles on his shoes, a use of color he had exclusively pioneered on shoes that had previously been lacquered beige or black.
Taking the two decisions together suggests a solution for Louboutin, but one that may put him in a bind. Louboutin could claim that the shoes he creates are not art and should not be considered as such. He could argue that women purchase his red-soled shoes as a status symbol, not as art, and do not appreciate the finer artistic qualities of the shoes (consider how laymen often perceive fashion shows as displaying clothes that no one would wear). As such, the red sole is a unique mark of recognition, like the red wax of Maker’s Mark, and is not functional. However, pursuing an argument that his use of red soles does not convey any artistic meaning and is not functional might cause Louboutin to lose credibility with those in the fashion community for debasing their trade.
Should Louboutin make this argument? Do you agree with the Louboutin and Maker’s Mark decisions? I suggest pondering the question over a glass of whiskey, neat.
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