Press Release
New York, NY, April 5, 2010 – Kenyon & Kenyon, one of the largest and most diversified intellectual property law firms in the world, has won a high-stakes litigation battle for Kentucky-based bourbon producer Maker’s Mark in a trademark dispute with competitors Diageo North America and Casa Cuevo regarding the design of the company’s red dripping wax seal. The case began in 2003 and the decision was issued on April 2, 2010 by Judge John G. Heyburn II of the Western District of Kentucky.
“The Court is convinced that the Maker’s Mark red dripping wax seal is an extremely strong mark due to its unique design and the company’s singular marketing efforts,” Judge John G. Heyburn wrote in his decision. “This factor is particularly important in the analysis here for two reasons: (1) trademark laws are designed, in part, to protect creativity, brand identification and brand design loyalty, and (2) the more well-known the trademark is, the more likely it is that potential Reserva consumers will recognize it and assume its use indicates an affiliation or association with Maker’s Mark.”
Edward T. Colbert, the lead outside counsel for Maker’s Mark who is based in Kenyon & Kenyon’s Washingon, D.C. office, won an injunction without an award of damages.
The decision by Judge Heyburn stated: “The injunction prevents consumer confusion and acknowledges and protects Maker’s Mark’s significant legal interest in the red dripping wax seal, a mark that has become the symbol of its company. It also serves as a sword Maker’s Mark can wield against Diageo and Cuervo, in the unlikely event they resume their use in the future. To a lesser degree, it also protects Maker’s Mark from other competitors or quasi-competitors in the industry, in that it may serve to discourage them from treading too closely on the mark.”
About Kenyon & Kenyon LLP
Kenyon & Kenyon is consistently ranked by peers and in-house counsel as one of the top firms for intellectual property law. Since its founding in 1879, the firm has provided its worldwide clientele with litigation, prosecution, licensing and counseling services. Large and small enterprises and individuals choose Kenyon to design and implement intellectual property strategies when it matters most. The firm has offices in New York, Washington, DC, and the Silicon Valley.