This past weekend, my fiancé and a couple of friends traveled to the Markers Mark distillery in Loretto, Kentucky. During our tour of the distillery, we not only learned of its rich history but also participated in a decade’s old tradition—hand-dipping their bottles. Each bottle of Makers Mark is hand-dipped in red wax, giving their bottles their signature look. Moreover, as the hot wax runs down the neck of the bottle, it cools, creating “irregular tendrils” down the neck. This “free form wax neck” creates a protectable trade dress.
What is a Trade Dress?
Trade dress is a unique kind of trademark protection afforded by the Lanham Act. Specifically, the TMEP states that “trade dress includes the design of a product . . . the packaging in which is product is sold . . . the color of a product. . . the packaging in which a product is sold, and the flavor of a product.” See TMEP 1202.02. To be eligible for trade dress protection, the elements must (1) not be functional and (2) have acquired distinctiveness or secondary meaning.
Functionality
Regarding the first factor, the elements must not be functional. A functionality analysis is highly dependent on the specific facts of each case. Specifically, a determination of functionality is highly dependent on the specific facts of each case. However, the Supreme Court has held that a feature is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Qualitex, supra, at 165, 115 S.Ct. 1300 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606). In the case of the Makers Mark wax seal is purely aesthetic in nature. While the wax drips over the bottle’s top and neck, the bottle itself is separately sealed before the wax is applied.
Acquired Distinctiveness
Regarding the second factor, the elements must have acquired distinctiveness and secondary meaning. Specifically, to establish secondary meaning, the applicant must demonstrate that the public associates the elements to the source. In other words, it must be able to distinguish the goods of one entity from those of another.
In 2018, the U.S. Court of Appeals for the Federal Circuit detailed several factors for assessing secondary meaning, including:
- Publics association of the goods with the source;
- Length of exclusive use;
- Amount of advertising;
- Amount of sales;
- Copying; and
- Unsolicited media coverage.
Takeaway
Overall, for some applicants, trade dress can be a valuable addition to expanding a company’s intellectual property portfolio. Over the years, a plethora of companies has sought trade dress protection for their products. Other famous brands who have valuable trade dresses including the shape of the Coca-Cola bottle, the red-sole of a Louboutin shoe, and the colors of the Reese’s Peanut Butter Cups wrapper.
