Rum and trademarks

Since intellectual property law and cocktails are a recurring topic here, it’s worth mentioning a couple recent developments. First, the tiki-themed craft cocktail bar Painkiller in New York has been forced to change its name to PKNY after Pusser’s rum sued over its use of the name Painkiller, a pre-existing cocktail that the company trademarked:

In the lawsuit filed April 12 in U.S. District Court, plaintiff Pusser’s Rum Ltd., which sells rum, cocktail mixers and rum products such as cakes under the brand name “Painkiller” sued tiki bar owners Giuseppe Gonzalez and Richard Boccato, claiming irreparable harm to its brand, unfair competition and unfair business practices, according to court documents on file in the Southern District of New York. [...]

The plaintiffs demanded that the bar stop calling itself and any of its drinks by the name Painkiller, for which they hold two U.S. trademarks, one for “alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice,” and one for “non-alcoholic mixed fruit juices,” which they market as “Pusser’s Painkiller Cocktail Mix.” [...]

In a consent order signed by both parties May 16, Gonzalez and Boccato, along with their corporate entity, Essex Street Bar & Lounge, Inc., agreed to be “permanently restrained and enjoined” from using the trademarked term Painkiller or “any other confusingly similar term” in association with any bar, restaurant, grill, lounge or other establishment, or any “beverage, libation or cocktail” unless it is made with Pusser’s rum. They also agreed not to use the term in any marketing or advertising materials, and to give up their website domain within 45 days of the order, though the court did not require them to turn it over to Pusser’s.

Similarly, Portland’s own Trader Tiki has been forced to change the name of his line of syrups to B. G. Reynolds. He doesn’t name the company that would object to his marketing a line of tiki syrups with “Trader” in the name, but if you’re into cocktails you can probably make a good guess who that might be. (Side note: Why do these disputes always seem to involve rum and tiki companies?)

About a year ago, I was approached by the owners of another company of similar name, and asked cordially to stop calling myself a Trader and go off and do something else. I fought tooth and nail, but they weren’t having it. So, in respect to the original “Trader”, and with the advice of a few good friends, I am moving forward with the name change from Trader Tiki’s Exotic Syrups to B.G. Reynolds’ Exotic Syrups.

Naturally this is creating some ill will in the cocktail community, at least in the direction of Pusser’s, which is getting blasted on Twitter today. This is part of a general backlash against trademarking cocktail names (see the conflict over the Dark and Stormy). There’s also a lot of confusion over copyright and trademarks. Tim Lee helpfully clarified the difference last year:

But perhaps the most important difference is that trademarks have a dramatically different policy rationale from patents and copyrights. Copyrights and patents are designed to create legal monopolies that drive up the price of creative works and thereby reward authors and inventors for their creativity. Although consumers may benefit from the resulting increase in creativity, the short-term effect is to force them to pay more than they would in a competitive market. Trademarks aren’t like that at all. The point is not to limit competition. To the contrary, the point is to enhance competition by ensuring that consumers know what they’re getting. This is why it’s emphatically legal to run comparative advertising featuring your competitor’s trademarks. Microsoft may own the “Windows” trademark, but Apple is free to use it as a punching bag as long as they don’t mislead consumers about what they’re getting.

The same principle applies in the Dark and Stormy case. The point of trademark law is to make sure consumers know what they’re getting (whether it’s Gosling or Zaya), not to give Gosling a monopoly on the concept of mixing ginger beer with rum. I haven’t seen Zaya’s ad and I’m not a trademark lawyer, so I don’t want to speculate on the legal merits of Gosling’s position. But certainly the apparentl purpose of Zaya’s ad—encouraging bartenders to substitute their own rum in place of Gosling’s—is entirely within the spirit of trademark law. If the net effect of Gosling’s threats is that consumers wind up with fewer opportunities to try mixing ginger beer with different kinds of rum, that is certainly not what trademark law is supposed to accomplish.

This is a matter of trademark law, not copyright. The company actively markets and owns a trademark to a product called Pusser’s Painkiller Cocktail Mix. So while it was arguably excessive of them to sue a tiki bar with the same name, it’s not totally implausible that the bar might create confusion among customers.

A more concerning part of the settlement is the requirement that PKNY no longer offer any drink called a Painkiller that doesn’t use Pusser’s rum. Though the settlement doesn’t bind anyone else, liquor companies would love to be able to trademark popular cocktails and forbid bars from substituting other brands. This is part of what was behind the Dark and Stormy dispute, and there are rumors of one whiskey brand sending cease and desist orders to bars advertising a classic drink of the same name if they don’t use their product (I haven’t been able to confirm this, so I’m not naming it here). If this strategy continues, that would be potentially be much more restrictive of bartenders’ creativity. Whatever the legal merits of the case, Pusser’s deserves all the scorn their receiving for forcing use of their rum in a cocktail that they didn’t invent.

Comments

  1. Jill-O says:

    I have to say, when I first saw the line of Trader Tiki labeled products at the S&M show last year (Spirits & Mixology!), I thought, “Hey, there’s a lawsuit waiting to happen.”

    But that Painkiller stuff, that is ridiculous. I am opposed to anything that will kill creativity. And that’s what medicine droppers are for, I guess: one drop of something that won’t change the flavor, but will change the recipe…especially if it is a drop of water. ;o)

    Still gotta be careful what you call it though, eh?

  2. J. Shilling says:

    Registering a trademark is one thing, defending is another – and in defending it these companies must make claims against every single person, organization, amateur YouTube cocktail demonstrator, bar owner, etc. creating Painkillers & Dark & Stormy’s without their liquor equally otherwise their trademark stands to be rendered DEAD due to it being in “common use” – which in these cases will be next to impossible because they are ALREADY in “common & wide use”. Going after one bar & one menu is ludicrous, as is the practice of trademarking a classic cocktail in the first place.

    Pusser’s has made a grave error of judgment as evidenced by the nearly instantaneous backlash across the social web amongst professional members and cocktail fans throughout the cocktail community: http://www.thelodownny.com/leslog/2011/06/painkillers-supporters-launch-boycott-of-pussers-rum.html

  3. Lew Bryson says:

    Copyrights and patents are designed to create legal monopolies that drive up the price of creative works and thereby reward authors and inventors for their creativity. Although consumers may benefit from the resulting increase in creativity, the short-term effect is to force them to pay more than they would in a competitive market.

    Silly me; I didn’t realize I was supposed to be gouging with my copyrighted material! I thought it was so I had some possible recourse when unscrupulous bastards stole the words that are my living and used them in their products — websites, calendars, books — without credit or recompense. Glad Tim Lee explained this for me. I’ll have to start charging magazines more for my work (I’ll bet once I explain it, they’ll cheerfully increase my rate!). Can’t wait to force consumers to pay more than they would in a competitive market like the Internet (where all they ever want to pay is nothing…and most of what they get is worth exactly that).

  4. Dave Stolte says:

    Trader Joe’s sells alcohol and uses bamboo and tropical motifs in their interiors – are they getting sued?

    Trader Sam’s tiki bar just opened at Disneyland – what about them?

    These copyright-grab moves are troubling. I’m hoping there isn’t a snowballing precedent being set.

  5. It’s a shame that the cost of defending your original name, like Trader Tiki, is more than a new business can afford and probably more than the company is worth. No one would reasonably confuse Trader Tiki with either Trader Vic or Trader Joe but this kind of action does keep the lawyers in business. Shakespeare was right!

  6. DavidS says:

    Honestly, I’m fascinated by all this. The question isn’t whether or not cocktails should be trademarkable (I strongly disagree with a lot of what you’ve quoted from Tim Lee above. His position on copyrights and patents seems very subjective), but “if the law allows for other recipe items to be trademarked, such as Toll House Cookies, why shouldn’t that legal logic also apply to cocktails?” Truth be told, our trademark and copyright laws are very loose on several fronts when compared to Europe (where Paul Smith’s stripe designs and Franklin Loufrani’s smiley face are protected). If Toll House Cookies can be trademarked, then the Painkiller or Dark and Stormy surely should be allowed to be. That doesn’t make it fair, just the law.

    If the PKNY folk were asked/warned several times and they ignored Pusser’s, then Pusser’s has a clear reason to sue. What confuses me, however, is that you cite that Pusser’s hold the trademark for alcoholic and non-alcohol beverages. Trademarks are assigned based on various classes — you don’t get one for everything under the sun. Also, to be valid, trademarks must be enforced.

    I did a little digging and Pusser’s application for “Painkiller” for “restaurant and bar services” was applied for in Sept 2010. If PKNY opened prior to that — and Pusser’s didn’t hold a valid trademark or service mark for the term in the particular class when PKNY opened under the “Painkiller” name — PKNY has a very defensible case. Of course, it comes down to being able to afford the legal battle, but I’m sure there’s someone who would take the case pro bono. It’s also worth noting that Pusser’s trademark claim (for restaurants and bar services) comes up for opposition on June 21, 2011. This means that anyone has 30 days to oppose it with a more substantial claim.

    So, if PKNY existed as “Painkiller” prior to Sept 2010, they should protest Pusser’s claim as of June 21st.

    I rambled a bit, I know, but you get the point.

  7. DavidS says:

    One more thing. Painkiller NYC apparently opened in April 2010. If Pusser’s did not hold the “Painkiller” trademark for restaurant and bar services at that time, PKNY may essentially own the trademark (assuming they were the first to use it). Trademarks are about usage, not government filing.

    Of course, I’m not a lawyer — so take my words as those of an “enthusiast” only.

  8. Vidiot says:

    I’ve also looked into the trademarks for “Painkiller” held by Pusser’s, and am of the opinion (I am, unfortunately, not a lawyer) that Pusser’s never should’ve gotten a trademark on “Painkiller” as an alcoholic beverage in the first place. Another company tried to trademark “Moscow Mule” in 2007 and was shot down by the USPTO because it was too descriptive and in common use. I’d think that that would also apply to a Painkiller cocktail, which predates Pusser’s Rum, wasn’t originally made with it, and is still apparently not made with it at the bar where it was invented.

    My blog post is here: http://www.cocktailians.com/2011/06/chilling-effects-part-ii-pussers-revenge.html

    And I have an earlier one on the Dark ‘n’ Stormy kerfuffle here: http://www.cocktailians.com/2009/08/the-intellectual-property-of-booze.html

  9. Doug Winship says:

    I also meant to take note of the whole tiki angle on these disputes. Perhaps Don and Vic had it right: Just guard your secrets entirely, and no one can steal them.

  10. Here’s what you do: create a signature drink with your rum, then spend years of time and millions of dollars of your treasure over many years to finally – finally – achieve success and make the drink famous.

    But please – please – don’t trademark and protect your considerable investment. After all, if the Ronnie Come Latelys and your competitors, big and small can’t profit at your expense, then why bother?

    Sound silly? Of course. There are literally thousands of drinks that are unprotected and available for all the creativity these pouting bartenders wish to apply. Not to mention creating drinks of their own, and unique to their own establishment. But noooooooooo! They’d rather borrow the literal handful of protected drinks – by Bacardi, Pussers and Goslings – and ride on someone else’s reputation and success. How inventive.

    Finally a word from Charles Tobias of Pussers…

    “Under trademark law, if the trademark owner is aware of a third party’s infringement and does not move to correct it, the trademark is not sustainable if challenged in court. We could not risk losing this mark because it would’ve wiped out two good commercial opportunities that we see for our company’s future. Several years of work would have gone down the drain. For 8 years, we’ve been working on a Painkiller Mix and looking at the chance for a Painkiller RTD (Ready-to-Drink Painkiller in a can). Losing the Painkiller trademarks would take away all chances of success for these products. They would be unprotected in the marketplace. If they took off, under the name “Painkiller”, any giant of a company like a Diageo or a Bacardi or some other could introduce a drink of the same name and we’d be out of the running instantly. We’d be dead.

    Thanks to the trademark law, the little guy does have a chance. indset, but neither was there any other choice. We have to protect our intellectual property on which we believe so much of our future depends. “

    We are a nation of laws, not unchecked piracy. As rum drinkers and reviewers we owe it to small distillers like the family Gosling and Tobias to respect their hard work. It’s the the right thing to do, both legally and morally.

    I know the Tobias family, and I can assure you that Pusser’s and the Painkiller are a labor of love, with half – yes half – their profits going to the British Royal Navy Seaman’s Fund. Keep that in mind the next time you substitute your house rum. Shame!

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